719.01 Papers in Image File Wrapper [R-11.2013]

Papers that do not become a permanent part of the record should not be entered as a paper in the image file wrapper. No paper legally entered in the image file wrapper should ever be withdrawn or expunged from the application file, especially a part of the original disclosure of the application, without special authority of the Director. However, 37 CFR 1.59 provides that certain documents may be expunged if they were unintentionally submitted or contain proprietary information which has not been made public and is not important to a decision of patentability. See MPEP § 724. Form paragraph 7.214 may be used to notify applicant that papers in an application that has received a filing date ordinarily will not be returned.

719.02 Residence of Inventor Changed [R-07.2015]

The distinction between “residence” and mailing address should not be lost sight of. See MPEP § 602.08(a).

Unless specifically requested by applicant, the residence(s) associated with the inventor(s) will not be changed. For example, if a new oath gives a different residence from the original, the file will not be changed.

For a patent application publication to be published with residence information that differs from that originally filed, the revised information must be entered into the Office electronic records at least nine weeks before the publication date of the application. For patent applications filed on or after September 16, 2012, in order for a patent to issue with the new residence, applicants must file a corrected Application Data Sheet (37 CFR 1.76(c)) showing the new residence information with underlining for insertions and strike-through or brackets for text removed. See MPEP § 601.05(a). For applications filed prior to September 16, 2012, applicants are strongly encouraged to file a Supplemental Application Data Sheet showing the new residence information preferably with underlining for insertions and strike-through or brackets for text removed. See MPEP § 601.05(b).

719.03 Classification During Examination [R-07.2022]

When a new application is received in a Technology Center, the classification of the application and the initials or name of the examiner who will examine it or other assigned docket designation are noted in the application file. See also MPEP § 909.01(b).

719.04 Index of Claims [R-11.2013]

The "Index of Claims" found in the image file wrapper of an application is frequently referenced. It should be updated with each Office action to maintain a reliable index of all claims in the application.

The claim numbers appearing on the Index of Claims refer to the claim numbers during prosecution while the adjacent columns refer to the status of each of the claims and the final column refers to the final numbering of the allowed claims (if applicable).

A space is provided above each adjacent column for completion by the examiner to indicate the date of each Office action together with the resulting status of each claim. At the time of allowance, the examiner places the final patent claim numbers in the column marked "Final."

719.05 Field of Search [R-07.2022]

In the first action on the merits of an application, the examiner must record in the appropriate sections of the Official Correspondence “Search Notes” form the areas in which the search for prior art was made. The examiner must also indicate the date(s) on which the search was conducted and provide their initials. In subsequent actions, where the search is brought up to date and/or where a further search is made, the examiner must indicate that the search has been updated and/or identify the additional field of search and include the date and the examiner’s initials in the appropriate sections of the “Search Notes” form. Any search updates should include the appropriate databases and the search queries and classifications employed in the original search. See MPEP § 904. Great care should be taken so as to clearly indicate the places searched and the date(s) on which the search was conducted and/or updated.

In order to provide a complete, accurate, and uniform record of what has been searched and considered by the examiner for each application, the U.S. Patent and Trademark Office has established procedures for recording search data in the application file. Such a record is of importance to anyone evaluating the strength and validity of a patent, particularly if the patent is involved in litigation.

Searches are listed in the “SEARCHED” boxes and/or "SEARCH NOTES" box of the "Search Notes" form.

For example, in the sample “Search Notes” form reproduced below, the “SEARCH NOTES” box indicates how the Search was limited for documents classified under CPC symbols D03D 1/0005 and B02C 19/0081. The absence of entries in the “SEARCH NOTES” box for the other classification symbols searched indicates that all documents having those symbols were reviewed or there is a search history printout in the file indicating how the search of those symbols was limited. As provided in subsection II.B below, a complete search history in the form of a printout must be included in the application file any time a limited electronic search was performed.

I. ENTRIES IN “SEARCHED” BOXES

The Search Notes form includes three “SEARCHED” boxes for recording searches in Cooperative Patent Classification (CPC), CPC Combination Sets and U.S. Patent Classification (USPC). When documenting a classification search, as described below, the examiner should ensure the proper box(es) is/are used.

A classification search is defined as a search of the documents in a particular classification location, whether classified by CPC or USPC, and may be limited by a text query, filters or other means. When a classification search is performed, the classification symbol must be recorded in the appropriate “SEARCHED” box section of the “Search Notes” form along with the date that the search was performed (or updated) and the examiner’s initials. When a classification search is limited, the examiner must ensure that how the search was limited is made of record. In most situations, how the search was limited would be apparent in a search history printout and in these situations, the examiner should include the printout with the “Search Notes” form when making the "Search Notes" of record. When the search is limited by an approach not apparent in the search history printout, the manner in which the classification search was limited should be made of record by annotating the “SEARCH NOTES” box. Unless a search of all of the documents for a particular classification location was performed, it would be inaccurate to merely record the classification symbol in the “SEARCHED” box without including the search history printout or indicating how the search was limited in the “SEARCH NOTES” box.

II. ENTRIES IN “SEARCH NOTES” BOX

Entries made in the “SEARCH NOTES” box are of equal importance to those placed in the “SEARCHED” box. They are intended to complete the application file record of areas and/or documents considered by the examiner in their search.

A. Format of Entries in the "SEARCH NOTES" Section

The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.

• (A) Annotations indicating how a classification search was limited, as discussed in subsection I above.
• (B) Text search performed in a particular database where no classification search was performed.

  If a text search was performed in a particular database and no classification search was performed, the following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date or dates that the search was performed (or updated) and the examiner’s initials. A search history printout must also be included in the file. See subsection II.B below.

• (C) Searches made within the International Patent Classification System (IPC).
• (D) Searches performed by the Scientific and Technical Information Center (STIC).
  • The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL webpage. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.
• (E) A consultation with other examiners to determine if relevant search fields exist in their areas of expertise. If the subclass is not searched, record the class and subclass, if any, discussed, followed by “(consulted).” This entry may also include the name of the examiner consulted and the art unit.
  Examples

  F16B fasteners (consulted)

  F16B fasteners (consulted J. Doe A.U. 3501)

  F16B 2/00 (consulted)

• (F) Searches performed in electronic journals and electronic books available to examiners on their desktop through the STIC NPL website. Examiners should contact their EIC if they need assistance using these tools and creating a search history printout.
• (G) Searches performed in other media collections or databases (e.g., CD-ROM databases, specialized databases, etc.), record data as necessary to provide unique identification of material searched and sufficient information as to the search query or request so that the search can be updated. The record should also document the location of the database and its form (CD-ROM, etc.).
  • Example: Citing a biotech CD-ROM database

    Entrez: Sequences, National Center for Biotechnology Information, Version 7.19.91b (CD-ROM, TC 1600) Searched HIV and vaccine; neighbored Galloway article dated 6/5/91 on April 1, 1990.

  • Example: Citing a nonbiotech CD-ROM database

    Computer Select, (November, 1991), Ziff Davis Communications Co., (CD-ROM, STIC), Searched Unix and emulation on December 1, 1991.

• (H) Searches performed on the Internet.
  • For Internet search engines, such as Google^®, Yahoo^®, and Bing^®, print out the first page and any of the following pages that include names of any webpages reviewed during the search. Use the print icon on the Microsoft Internet Explorer^® toolbar or use the file-print command. Review the printout to determine if the Internet search engine name, the search logic, and the date of the search are present. If any of these are missing, write the missing information on the printout. Indicate all webpages reviewed.
• (I) Nonelectronic searches of publications in paper form, e.g., searches of the print books or journals in an EIC. Record according to the following for each type of literature search:
  • (1) Abstracting publications, such as Chemical Abstracts, record name of publications, list terms consulted in index, and indicate period covered.
    Examples

    Chem. Abs, Palladium hydride Jan.-June 1975

    Eng. Index, Data Conversion Analog to Digital 1975

  • (2) Periodicals — list by title, volume, issue, pages and date, as appropriate.
    Examples

    Popular Mechanics, June-Dec. 1974

    Lubrication Engineering, vols. 20-24

  • (3) Books — list by title, author, edition or date, pages, as appropriate.
    Example

    Introduction to Hydraulic Fluids, Roger E. Hatton, 1962

  • (4) Other types of literature not specifically mentioned herein (i.e., catalogs, manufacturer’s literature, private collections, etc.).
    • Record data as necessary to provide unique identification of material searched.
    • Example

      Sears Roebuck catalog, Spring-Summer, 1973.

    • A cursory or browsing search through a number of materials that are not found to be of significant relevance may be indicated in a collective manner, e.g., “Browsed STIC shelves under QA 76.5” or “Browsed text books in STIC relating to......................” More detailed reviews or searches through books and periodicals or any search of terms in abstracting publications should be specifically recorded, however.
• (J) A review of art cited in a parent application or an original patent, as required for all continuation and continuation-in-part applications, divisional applications, reissue applications and reexamination proceedings, or a review of art cited in related applications.
  • Record the application number of a parent application, followed by “refs. checked” or “refs. ck’ed.” If for any reason not all of the references have been checked because they are not available, such exceptions should be noted.
  • Examples

    S. N. XX/495,123 refs. checked

    S. N. XX/490,000 refs. checked

    S. N. XX/480,111 refs. checked except for Greek patent to Kam

    S. N. XX/410,113 refs. not checked since the file was not available

  • Record the patent number of a parent or related application that is now patented or of an original patent now being reissued with “refs. checked” or “refs. ck’ed.”
  • Examples

    Pat. 3,900,000 refs. checked

    Pat. 3,911,111 refs. ck’ed

• (K) A review of documents cited in a related trial before the Patent Trial and Appeal Board where the claims DO NOT have similar scope or similar claim elements.
  • Record the trial number, U.S. Patent on trial and date reviewed.
    Examples

    IPR2012-99999 Reviewed Inter Partes Review of U.S. Patent No. 9,999,999 on 12/31/2019

    PGR2015-99999 Reviewed Post Grant Review of U.S. Patent No. 9,999,999 on 12/31/2019

    CBM2016-99999 Reviewed Covered Business Method Patent Review of U.S. Patent No. 9,999,999 on 12/31/2019

• (L) A review of documents cited in a related trial before the Patent Trial and Appeal Board where the claims DO HAVE similar scope or similar claim elements.
  • Record the trial number, document reviewed, U.S. Patent on trial and date reviewed.
    Examples

    IPR2012-99999 Reviewed Petition for Inter Partes Review of U.S. Patent No. 9,999,999 on 12/31/2019

    PGR2015-99999 Reviewed Petition for Post Grant Review of U.S. Patent No. 9,999,999 on 12/31/2019

    CBM2016-99999 Reviewed Decision Instituting Covered Business Method Patent Review of U.S. Patent No. 9,999,999 on 12/31/2019

B. Search History Printouts

Any time that a limited electronic search was performed (e.g., limited classified search or text search), a complete search history in the form of a printout must be included in the application file. The search history must include the following minimum information:

• (A) all the search logic or chemical structure or sequence(s) used as a database query;
• (B) all the name(s) of the file(s) searched and the database service;
• (C) the date the search was made or updated; and
• (D) an indication of the examiner who performed the search (e.g. a user ID or the examiner’s initials).

It would be improper to merely list the tool/database, e.g., “EAST” or identify the search queries in the “SEARCH NOTES” box of the “Search Notes” form. A search history printout should be devoid of result printouts to limit the “bulk search printouts.”

Regarding nucleotide and peptide sequence searches, these searches must be documented by printout(s). A copy of a printout for each database source searched must be included in the application file. Each printout must include all the information up to the “ALIGNMENTS” section.

Most of the database services accessed in application searches provide a command to display or print the search history which includes most, if not all, of the minimum required information for documenting database searches. Table 1 below lists the history command for each database service and the required minimum documentation elements included when the history command is entered. Any missing elements may be documented by writing them on the printout of the search history or by supplying further portions of the search transcript which do include the missing elements.

If there are several search statements in the history, the statement or statements of which the results were reviewed should be indicated.

TABLE 1
History Commands and Included Elements by Database Service (“Yes” below indicates the element is present)
Database Service	History Command	Name of Database Service	Search Logic	Name of File(s) Searched	Date of Search
ProQuest Dialog	Click on Export All Searches	Yes	Yes	Yes	Yes
STN	D his full	Yes	Yes	Yes	Yes
SciFinder	Select History from the Saved Searches drop-down menu, Print to PDF or Export to Microsoft Word	Yes	Yes	Yes	Yes
Questel-Orbit	Click Search History from the My session menu	Yes	Yes	Yes	Yes
Lexis/Nexis	Click History; print page	Yes	Yes	Yes	Yes
ABSS System	None	Yes	Yes	Yes	Yes
EAST*	View, Search History	Yes	Yes	Yes	Yes
WEST*	Yes	Yes	Yes	Yes	Yes
IEEE Xplore	Option 1: Print out search results page Option 2: Sign In (personal account available as part of USPTO subscription), click Search History	Yes	Yes	Yes	Yes
Knovel	Print out search results page	Yes	Yes	Yes	Yes
EBSCOHost	Click Search History, then Print Search History	Yes	Yes	Yes	Yes
IP.com	Print out search results page	Yes	Yes	Yes	Yes
ACM Digital Library	Print out search results page	Yes	Yes	Yes	Yes
INSPEC (ProQuest Dialog)	Click on Export All Searches	Yes	Yes	Yes	Yes
SPIE Digital Library	Print out search results page	Yes	Yes	Yes	Yes
Research Disclosure	Print out search results page	Yes	Yes	Yes	Yes

Explanation of Table Terminology

History Command - Generally, a display of what the user has asked the search software to do will display the search logic entered by the user. Some histories are limited to display of the searches done only in the current file while others deliver a complete record of what file or files were accessed and all searches done since sign on.

Name of Database Service - This is the name of the database service (i.e., EAST, IEEE Xplore) used to perform the search.

Search Logic - Generally, a display of the search commands executed by the search software. For a structure or sequence search, this can be a printout of the structure or sequence used to query the system.

Name of File(s) Searched - The name of the collection(s) of data accessed.

Date of Search - Dialog and Questel-Orbit do not display the date of search as part of the history command. Dialog and Questel-Orbit supply the date of search during log off. For WEST examiners should use the eRF search history options.

III. INTERFERENCE SEARCH HISTORY

When an application is in condition for allowance, an interference search must be made by using the most efficient and effective manner based on the claimed subject matter in the broadest claim (e.g., by performing a text search, or a classified search, or a combination of text search and classified search, of the “US-PGPUB” database in EAST or WEST). Examiners are reminded that some applications, such as continuation-in-part applications, may contain claims entitled to different effective filing dates (see MPEP §§ 2133.01 and 2152.01), and that each effective filing date should be considered when performing the interference search. If the application contains a claim directed to a nucleotide or peptide sequence, the examiner must submit a request to STIC to perform an interference search of the sequence.

Completion of the interference search should be recorded in the “INTERFERENCE SEARCH” section of the “Search Notes” form with an identification of the manner in which the interference search was limited (if any) in the “Search Notes” by providing an appropriate annotation.

A printout of only the database(s) searched, the query(ies) used in the interference search (if any), and the date the interference search was performed must be made of record in the application file. The result printouts of the interference search must not be placed in the application file.

IV. INFORMATION NOT RECORDED IN THE APPLICATION FILE

For an indication of consideration or nonconsideration of prior art citations submitted by applicant in Information Disclosure Statements (37 CFR 1.97 and 1.98), see MPEP § 609et seq.