Memoranda to the Examining Corps

• Federal Circuit Decision in CLS Bank et al. v. Alice Corp. (signed May 13, 2013) [PDF]
• Changes in Examiner Review of Inventor's Oaths or Declarations, Requests to Correct Inventorship, and Elimination of the Notice of Draftsperson's Patent Drawing Review (signed October 25, 2012) [PDF]
• 2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature (signed July 3, 2012) [PDF]
• Supreme Court Decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. (signed March 21, 2012) [PDF]
• Tax Strategies Are Deemed to Be Within the Prior Art (signed September 20, 2011) [PDF]
• Requirement for a Disclosure of the Best Mode (signed September 20, 2011) [PDF]
• Claims Directed to or Encompassing a Human Organism (signed September 20, 2011) [PDF]
• Analogous Art for Obviousness Rejections (signed July 26, 2011) [PDF]
• Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications (signed February 9, 2011) [PDF]
  • Federal Register notice - Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications (signed January 21, 2011)
  • Checklist - Summary of Examination Procedure for Determining Compliance with 35 U.S.C. 112
• New Patent Quality Assurance Metrics (signed October 7, 2010) [PDF] [MORE INFORMATION]
• Streamlined Procedure for Appeal Brief Review and Examiner's Answers in Inter Partes Reexamination Proceedings (signed August 17, 2010) [PDF]
• Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos (signed July 27, 2010) [PDF] [MORE INFORMATION]
• Supreme Court Decision in Bilski v. Kappos (signed June 28, 2010) [PDF]
• Revised Procedure for Appeal Brief Review of Ex Parte Reexamination Proceedings (signed 25 May 2010) [PDF]
• Revised Procedure for Appeal Brief Review (signed 29 March 2010) [PDF]
• Non-Compliant Amendment (signed 04 February 2010) [PDF]
• Changes to Restriction Form Paragraphs (signed 21 January 2010) [PDF]
• Machine Translation of a Non-English Document Being Relied Upon by the Examiner in Support of a Rejection in an Examiner's Answer (signed 17 November 2009) [PDF]
• Interim Examination Instructions For Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101 (signed 24 August 2009) [PDF]
• Guidance for Examining Process Claims in view of In re Bilski (signed 7 January 2009) [PDF]
• Indefiniteness rejections under 35 U.S.C. 112, second paragraph (signed 2 September 2008) [PDF]
• Rejections under 35 U.S.C. 112, second paragraph, when examining means (or step) plus function claim limitations under 35 U.S.C. 112, sixth paragraph (signed 2 September 2008) [PDF]
• Clarification of "Processes" under 35 U.S.C. § 101 (signed 15 May 2008) [PDF]
  
• The Supreme Court's KSR Obviousness Standard Clarification - Its Application in Reexamination (signed 27 March 2008) [PDF]
• Clarification of Treatment of Reissue Applications That Only Add One or More Narrower Claims (signed 15 November 2007) [PDF]
• Electronic Signatures and Initials Permitted by Personnel For Matters Under the Commissioner of Patents (signed 15 May 2007) [PDF]
• Changes to Restriction form paragraphs (signed 25 April 2007) [PDF]
• Clarification of Interim Guidelines For Examination of Patent Applications for Subject Matter Eligibility (signed 12 April 2007) [PDF]
• Clarification of Second Action Final Rejection Practice with Respect to Claims Drafted Using Alternative Language (signed 24 January 2007) [PDF]
• Clarification of Acceptable S-signatures Submitted by the Public (signed 12 January 2007) [PDF]
• Reminder - Communications via Internet e-mail (signed 19 June 2006) [PDF]
• Central FAX Number Change and RightFAX Reminder (07 July 2006) [PDF]
• Acceptance of Certain Non-Compliant Amendments Under 37 CFR 1.121(c) (signed 01 June 2005) [PDF] [text version]
• The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) [signed 11 January 2005]
  • Examiner Checklist for Prior Art Exclusions under 35 U.S.C. § 103(c) as amended by the Cooperative Research and Technology Enhancement (CREATE) Act (P.L. 108-453, effective December 10, 2004) [PDF]
  • [more information]
• Termination of transitional practice of supplying a copy of a provisional application relied upon to give prior art effect under 35 U.S.C. § 102(e) to a reference applied in a rejection (dated 29 October 2004) (posted 1Nov2004) [PDF] (supersedes memo signed 10 December 2003)
  
• Memo to TC Directors re: Clarification of the Effective Date Provision in the Rules of Practice before the Board of Patent Appeals and Interferences (Final Rule) and the Provision of Revised or New forms for Implementation of the Final Rule (10 September 2004) [PDF]
• Persons authorized to sign new grounds of rejections in Examiners Answers and authorized to approve Supplemental Examiner's Answers by TC (updated 18Oct2004) [PDF]
• [FAQs on Boad of Appeal Practice] (effective 13SEP2004)
• [FAQs on Revised Amendment Practice] (posted 27 January 2005)
• Nanotechnology Digest and forthcoming Nanotechnology Cross-Reference Art Collection (XRAC) - Class 977 (posted 13 September 2004) [PDF]
• Reminder of Office procedure for giving appellant notice and opportunity to reply to a request for rehearing of a decision by the Board of Patent Appeals and Interferences (signed 14 June 2004) [PDF]
• New Address for Customer Window which is Used for Patent Mail Not Delivered by USPS (signed 13 May 2004) [PDF]
• Examiner treatment of electronic Information Disclosure Statements (e-IDS) (signed 1 March 2004) [PDF]
• Clarification of Terminal Disclaimer Practice In Addressing Untimely Petitions to Withdraw the Holding of Abandonment Under MPEP 711.03(c) (signed 12 February 2004) [PDF]
• Transitional practice for supplying a copy of a provisional application relied upon to give prior art effect under 35 U.S.C. § 102(e) to a reference applied in a rejection  [PDF]
  • Appendix 1 [PDF]; Appendix 2 [PDF]; Appendix 3 [PDF]; Appendix 4 [PDF]; Appendix 5 [PDF] (signed 10 December 2003)
  • Transitional practice was terminated 29 October 2004
• Reminder of Office Policy Regarding Examiner's Statement of Reasons for Allowance (signed 8 August 2003) [PDF]
• Claim Interpretation and Procedures to Handle Applicant's Reply Arguing that a Term in the Claim is Limited to the Special Definition Provided in the Written Description (signed 25 June 2003) [PDF]
• Revised Guidance on Usage of Previously Cited/Considered Prior Art as References in Reexamination (signed 3 June 2003) [PDF]
• Objections to EFS Filed Applications (signed 14 April 2003) [PDF]
• Change in Correspondence Address for Patents (signed 31 March 2003) [PDF]
• Reliance upon abstracts and foreign language documents in support of a rejection (signed 29 April 2002) [PDF]
• Rejections Based on Undue Multiplicity (signed 18 March 2002) [PDF]
• Procedures for Relying on Facts Which are Not of Record as Common Knowledge or for Taking Official Notice (signed 1 February 2002) [PDF]

 

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