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Change Summary for the Ninth Edition, Revision 07.2022

    Change Summary for the Ninth Edition, Revision 07.2022

    U.S. DEPARTMENT OF COMMERCE
    U.S. Patent and Trademark Office
    P.O. Box 1450
    Alexandria
    Virginia22313-1450

    MANUAL OF PATENT EXAMINING PROCEDURE

    Ninth Edition, Latest Revision July 2022

    Executive Summary

    February 2023 Publication of Revision 07.2022

    The February 2023 publication of Revision 07.2022 includes the following changes:

    Revisions to MPEP Chapters 100, 200, 400, 500, 600, 700, 800, 900, 1000, 1100, 1200, 1300, 1400, 1500, 1700, 1800, 2000, 2100, 2200, 2400, 2500, 2700, 2800, 2900, and Chapter FPC (Form Paragraph Book), and updates to the Foreword, Introduction, Subject Matter Index, Appendix II, Appendix L, Appendix R, Appendix AI, and Appendix T.

    Chapter 100 was revised to review the process for obtaining access to or copies of a provisional application; and to incorporate changes resulting from Facilitating the Use of the World Intellectual Property Organization's ePCT System To Prepare International Applications for Filing With the United States Receiving Office, 85 FR 61604 (September 30, 2020).

    Chapter 200 was revised to clarify the potential need to change inventorship after a restriction requirement; to clarify requirements for making a delayed benefit claim; to specify requirements for English language translations of foreign applications; and to clarify that the merits of a priority claim is not determined unless required for patentability reasons.

    Chapter 400 was revised to clarify when and how to suggest a pro se applicant employ the services of a registered patent practitioner; to reflect changes from Changes to Representation of Others Before the United States Patent and Trademark Office, 86 FR 28442 (May 26, 2021); and to reflect changes from Removal of Certain Rules of Patent Practice, 86 FR 35226 (July 2, 2021).

    Chapter 500 was revised to incorporate changes from Removal of Certain Rules of Patent Practice, 86 FR 35226 (July 2, 2021); to update email and video conference communication policies; and to clarify some requirements for claiming small or micro entity status.

    Chapter 600 was revised to incorporate changes from Electronic Submission of a Sequence Listing, a Large Table, or a Computer Program Listing Appendix in Patent Applications, 86 FR 57035 (October 14, 2021); to incorporate changes from Standard for Presentation of Nucleotide and Amino Acid Sequence Listings Using eXtensible Markup Language (XML) in Patent Applications To Implement WIPO Standard ST.26; Incorporation by Reference, 87 FR 30806 (May 20, 2022); and to clarify IDS practice.

    Chapter 700 was revised to clarify Request for Continued Examination (RCE), interview, and suspension of action practices; to reflect changes from Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222-24 (March 2, 2020); to clarify amendment practice under 37 CFR 1.312; and to clarify affidavit and declaration practice under 35 U.S.C. 132 and submission of other evidence traversing rejections.

    Chapter 800 was revised to clarify the serious burden requirement for restriction; to update guidance for double patenting to include consideration of the patent term filing date; to clarify double patenting analysis when prior art is excepted under 35 U.S.C. 102(b)(2)(C) or disqualified under pre-AIA 35 U.S.C. 103(c); to clarify telephone restriction practice and add a new form paragraph 8.23.03; to clarify that only inventions claimed in a divisional application may potentially be subject to the prohibition against double patenting rejections under 35 U.S.C. 121; and to clarify the guidance for when claims for a different invention are added after an office action.

    Chapter 900 was revised to clarify which U.S. patents and patent application publications continue to receive classifications within USPC; to add definitions of thorough and complete search; and to add new MPEP §§ 909.01 and 909.02 to replace and revise topics previously covered in MPEP § 903.08 relating to assignment and transfer along with new sections discussing classification, routing and classification challenge procedures in CPC.

    Chapter 1000 was revised to clarify guidance to deciding officials on the acceptance of petitions filed under 37 CFR 1.181(f); and to clarify guidance on petitions decided by Technology Center Directors.

    Chapter 1100 was revised to incorporate changes from Electronic Submission of a Sequence Listing, a Large Table, or a Computer Program Listing Appendix in Patent Applications, 86 FR 57035 (October 14, 2021); to incorporate changes from Standard for Presentation of Nucleotide and Amino Acid Sequence Listings Using eXtensible Markup Language (XML) in Patent Applications To Implement WIPO Standard ST.26; Incorporation by Reference, 87 FR 30806 (May 20, 2022) and to clarify when a nonpublication request is appropriate.

    Chapter 1200 was revised to clarify the implications of appellant’s waiver of a challenge to a rejections; to clarify guidance regarding a Pre-Appeal Brief Request for Review; to clarify the timing and authorization of the appeal forwarding fee; to add information regarding filing an RCE after a Board decision that includes a new ground of rejection; to clarify the procedure for responding to an examiner’s requirement for rewriting dependent claim(s); and to clarify that applicants wanting to continue prosecution in applications where all claims are rejected and after a decision by the U.S. Court of Appeals for the Federal Circuit must file a continuation application prior to the court mandate.

    Chapter 1300 was revised to clarify that the examiner should determine if an extension of time is required for entry of an examiner’s amendment; to update the process for performing an interference search of applications held under Secrecy Order; to update the process for withdrawal from issue, at the initiative of the Office, after payment of the issue fee; to clarify how assignee information is identified for printing on an issued patent; and to clarify the procedure for handling a “Printer Rush.”

    Chapter 1400 was revised to clarify when a reissue oath or declaration must be signed by a party authorized to act on behalf of the assignee of the entire interest; to clarify the original patent requirement and the overlooked aspects inquiry; to clarify the process for correction of clerical mistakes, assignees’ names, named inventor(s), and benefit claims; and to update guidance on disclaimers to include consideration of the patent term filing date.

    Chapter 1500 was revised to include court decisions clarifying that design claims are limited to the article of manufacture identified in the claim and do not cover designs in the abstract; to update several form paragraphs to better conform with statutory text; to clarify when a single plan or planar-view may be sufficient to comply with 35 U.S.C. 112; and to update form paragraph 15.24.06 to clarify that filing a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting rejection.

    Chapter 1700 was revised to clarify post-employment restrictions of Office employees; and to reflect changes in the names and contact information of some Office divisions.

    Chapter 1800 was revised to reflect updated PCT rules and Administrative Instructions; to update requirements for sequence listings; to clarify the process for correcting or adding an indication referred to in PCT Rule 4.11; to clarify the process for making amendments to the claims are made under PCT Rule 66.8; to clarify the time period for amending an application after entering the U.S. national stage; to clarify that any required inventor’s oaths or declarations must be filed prior to or with a request for continued examination; and to clarify the requirements for drawings.

    Chapter 2000 was revised to reflect changes from Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board, 87 FR 45764 (July 29, 2022); and to reflect changes from Properly Presenting Prophetic and Working Examples in a Patent Application, 86 FR 35074 (July 1, 2021).

    Chapter 2100 was revised to reflect AIA definitions of “applicant” and “inventor”; to clarify that a (joint) inventor must be a natural person; to include court decisions clarifying prior art availability, written description, enablement, definiteness, “means or step plus function” limitations, and claim interpretation during prosecution; to clarify anticipation in genus-species situations; to clarify procedure when the 1-year grace period under pre-AIA 35 U.S.C. 102(b) ends on a holiday or weekend; to clarify obviousness analysis including official notice, reasonable expectation of success, and analogous prior art; to clarify the prior art exceptions under 35 U.S.C. 102(b); to clarify the use of affidavits or declarations under 37 CFR 1.130; and to clarify use of prophetic examples.

    Chapter 2200 was revised to incorporate changes from Standard for Presentation of Nucleotide and Amino Acid Sequence Listings Using eXtensible Markup Language (XML) in Patent Applications To Implement WIPO Standard ST.26; Incorporation by Reference, 87 FR 30806 (May 20, 2022) and Electronic Submission of a Sequence Listing, a Large Table, or a Computer Program Listing Appendix in Patent Applications, 86 FR 57035 (October 14, 2021).

    Chapter 2400 was revised to incorporate changes from Standard for Presentation of Nucleotide and Amino Acid Sequence Listings Using eXtensible Markup Language (XML) in Patent Applications To Implement WIPO Standard ST.26; Incorporation by Reference, 87 FR 30806 (May 20, 2022); to incorporate changes from Electronic Submission of a Sequence Listing, a Large Table, or a Computer Program Listing Appendix in Patent Applications, 86 FR 57035 (October 14, 2021); and to clarify requirements regarding hand delivery.

    Chapter 2500 was revised to reorganize MPEP § 2550 and clarify that the preamble text before subsection I applies generally to entity status discounts; and to clarify the requirements for acceptance of delayed payment of a maintenance fee in an expired patent consistent with Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222 (March 2, 2020).

    Chapter 2700 was revised to incorporate changes from Patent Term Adjustment Reductions in View of the Federal Circuit Decision in Supernus Pharm., Inc. v. Iancu, 85 FR 36335 (June 16, 2020); to clarify what constitutes a notification under 35 U.S.C. 132; and to clarify that the original patent grant date would be used to calculate the extension to which a reissued patent would be entitled.

    Chapter 2800 was revised to reflect changes in the names of some Office divisions and electronic tools.

    Chapter 2900 was revised to clarify the basic flow of an application under the Hague Agreement; to clarify aspects of directly or indirectly filing an international design application; to clarify appointment of a representative and specification of a correspondence address; to clarify that an inventor may not be a juristic entity; to clarify requirements with respect to the title, description, and drawings; and to clarify the processes for foreign priority claims, corrections, and recording of changes.

    Summary of Effective Dates
    MPEP Chapters

    Each section that has been revised in this revision (published February 2023) has a revision indicator of [R-07.2022], meaning that the section has been updated to include changes that became effective on or before July 31, 2022.

    MPEP Appendices

    Appendix II (List of Decisions Cited) includes the decisions cited in this Revision of the Manual.

    Appendix R (Patent Rules) includes the rules current as of July 31, 2022.

    Appendix L (Patent Laws) includes the laws current as of July 31, 2022.

    Appendix AI (Administrative Instructions under the PCT) as in force from July 1, 2022.

    Appendix T (Patent Cooperation Treaty and Regulations under the Treaty) as in force from July 1, 2022.

    Jeanne Clark

    Editor

    Manual of Patent Examining Procedure

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    Summary of Changes to MPEP Chapters

    For the revised chapters, particular attention is called to the changes in the following sections:

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    Editor Note: Acronyms and Short Form References

    -ST.25 rulemaking: Electronic Submission of a Sequence Listing, a Large Table, or a Computer Program Listing Appendix in Patent Applications, 86 FR 57035 (October 14, 2021),

    -ST.26 rulemaking: Standard for Presentation of Nucleotide and Amino Acid Sequence Listings Using eXtensible Markup Language (XML) in Patent Applications To Implement WIPO Standard ST.26; Incorporation by Reference, 87 FR 30806 (May 20, 2022).

    Passim

    Revised to replace references to the “Patent Application Location and Monitoring” (PALM) system with the names of current USPTO IT systems in revised sections.

    Passim

    Revised to replace references to “public PAIR” and “Patent Application Information Retrieval” system with “private PAIR” and/or “Patent Center” in revised sections.

    Passim

    Revised to replace references to EFS-Web with “the USPTO patent electronic filing system” as appropriate in revised sections.

    Passim

    Updated the reproduction of forms that were revised.

    Passim

    Revised to replace the following Senior Executive references: 1) the “Deputy Commissioner for Patent Examination Policy” to the “Deputy Commissioner for Patents who oversees the Office of Petitions”; and 2) the “Associate Commissioner for Patent Information Management” to the “Deputy Commissioner for Patents who oversees the Office of Patent Information Management.”

    Passim

    Updated website addresses (URLs) where necessary in revised sections.

    Passim

    Revised to add gender neutral language as appropriate in revised sections.

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    CHAPTER 100:

    Passim

    Revised “Office of Public Records” to the “Patent and Trademark Copy Fulfillment Branch of the Public Records Division”.

    Revised “Certification Division” to “Patent and Trademark Copy Fulfillment Branch of the Public Records Division” and/or “Patent and Trademark Copy Fulfillment Branch”.

    Revised “File Information Unit” to “Application Assistance Unit (AAU)”.

    101

    Revised “an application” to “a paper application (non-electronic)” to more clearly refer to the type of application that a charge on the Patent Data Portal must be made when removed from the operating area having custody of the file.

    Revised “5 U.S.C. 2635.701” to “5 CFR 2635.701” to correct the citation.

    102

    Revised to provide contact information for the AAU. Deleted instructions regarding using the File Information Unit or PALM to obtain status information and replaced by stating that the requester can utilize Patent Center to find status information.

    103

    In subsection III, revised “File Information Unit” to “Patent and Trademark Copy Fulfillment Branch Certified Copy Center (CCC)” and added the website address for form PTO/SB/68.

    In subsection VII, revised the process for obtaining access to or copies of a provisional application.

    115

    Deleted “as well as the historical status” regarding the description of what Patent Data Portal displays for Licensing and Review.

    Revised “An L&R code” to “A Secrecy Code” to reflect the proper code.

    Deleted reference to Technology Center Working Group 3640.

    120

    Revised the reproduced text of 37 CFR 5.1.

    121

    Replaced reference to TC Working Group 3640 with “Licensing and Review”.

    140

    Revised the reproduced text of 37 CFR 5.11, 5.12, and 5.15 and associated discussion to reflect the changes in Facilitating the Use of the World Intellectual Property Organization's ePCT System To Prepare International Applications for Filing With the United States Receiving Office, 85 FR 61604 (September 30, 2020) (hereinafter “ePCT final rule”).

    Revised the discussion of the ePCT software by adding a cross reference to MPEP §§ 1821 and 1832 for details of the requirements to export technical data for purposes related to the use of ePCT.

    In subsection I, added preferred fax number 571-270-9959 for Licensing and Review.

    In subsection III, deleted references to TC Working Group 3640.

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    CHAPTER 200:

    201.04

    In subsection I, revised the reproduced text of 37 CFR 1.53.

    201.06

    Added two new paragraphs discussing the potential need to change the inventorship after a restriction requirement and that inventorship overlap necessary for a divisional application would still exist after an inventorship change.

    201.08

    Added two new paragraphs discussing the potential need to change the inventorship after a restriction requirement and that inventorship overlap necessary for a divisional application would still exist after an inventorship change.

    Revised the second paragraph to eliminate the obsolete phrase “nonprovisional application of a provisional application”.

    202

    In subsection II, revised to clarify that a foreign priority claim must be proper before the Office computer systems are corrected.

    203.08

    In subsection I, revised to indicate that status information is available through Patent Center and that inquiries regarding status should be directed to Private PAIR.

    211.01

    In subsection I, added two paragraphs discussing how to claim the benefit of a prior-filed provisional application that went abandoned for failure to pay the basic filing fee.

    In subsection II, added a citation to MPEP § 201.06. Clarified that an overlap in appropriately named inventorship for a continuation, continuation-in-part, or divisional application under 35 U.S.C. 120 and 121 occurs if there is overlap upon filing of the child application and filing of the relied upon parent application.

    211.01(a)

    In subsection II, added a paragraph discussing when a petition to accept an unintentionally delayed claim under 37 CFR 1.78(c) must also be filed in addition to a petition to restore the benefit of a provisional application under 37 CFR 1.78(b).

    211.01(b)

    In subsection II, added a citation to and discussion of Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 126 USPQ2d 1317 (Fed. Cir. 2018). Added a comparison citation to Nat. Alts. Int’l, Inc. v. Iancu, 904 F. 3d 1375, 1380 (Fed. Cir. 2018).

    211.02

    In subsection III, deleted sentence which included “nonprovisional application of a provisional application”.

    211.04

    Revised to include a discussion that a delayed benefit claim which is filed more than two years after the date the benefit claim was due requires additional explanation of the circumstances surrounding the delay.

    213.02

    In subsection II, added a discussion regarding that there is an overlap in appropriately named inventorship if there is an overlap upon filing of a U.S. application and the filing of a relied upon prior-filed foreign application.

    213.04

    Revised to state that the English language translation of a non-English language foreign priority application must be that of the certified copy of the foreign application as filed.

    214

    Added a sentence at the end regarding the requirements of an English language translation of a non-English language foreign priority application.

    214.02

    Revised to include a discussion that a delayed benefit claim that is filed more than two years after the date the benefit claim was due requires additional explanation of the circumstances surrounding the delay. Revised to state that if a grantable petition for a delayed benefit claim is filed, a further petition to accept the delayed filing of the certified copy is not required.

    214.03

    In subsection V, revised “will” to “may” when discussing whether there will be review of the papers when a claim for foreign priority or a certified copy is filed after payment of the issue fee but prior to the grant of the patent.

    215

    In subsection III, added a paragraph regarding identifying in the Notice of Allowability the parent or related nonprovisional application containing the certified copy of the foreign priority application.

    In subsection V, revised “will” to “may” when discussing whether there will be review of the papers when a claim for foreign priority or a certified copy is filed after payment of the issue fee but prior to the grant of the patent.

    215.01

    Deleted the statement that a processing fee set forth in 37 CFR 1.17(i) must accompany the filing of a certified copy after the issue fee is paid.

    215.02(a)

    Deleted paragraph regarding ways the Office can and cannot obtain certain priority documents through the priority document exchange program because it was no longer accurate.

    215.02(b)

    Revised to reflect changes to the regulations associated with ST.25 and ST.26 rulemaking.

    216

    Revised to state that whether an applicant is entitled to the benefit of a foreign filing date on the basis of the disclosure is not determined unless such a determination is required for patentability reasons. Revised text and reproduced form paragraph 2.19 to include the requirements of an English language translation of a non-English language foreign priority application.

    216.01

    Added a citation to MPEP § 214.02 for a discussion of the requirements of an unintentionally delayed priority claim petition.

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    CHAPTER 400:

    401

    Revised to provide additional explanation regarding how and when to suggest to a pro se applicant that it may be desirable to employ a registered patent practitioner.

    Revised form paragraph 4.10.

    402.01

    Revised the reproduced text of 37 CFR 11.9(a) and (b) and 11.10(a).

    402.03

    Revised the reproduced text of 37 CFR 11.18(c)(2).

    402.09

    Revised the reproduced text of 37 CFR 11.9(a) and (b).

    403.01

    Changed title from “Reserved” to “Deceased or Legally Incapacitated Inventor” to indicate the presence of underlying subsections.

    409.01

    Changed title from “Reserved” to “Deceased or Legally Incapacitated Inventor” to indicate the presence of underlying subsections.

    410

    Revised the reproduced text of 37 CFR 1.4(e) and 11.18(c)(2).

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    CHAPTER 500:

    501

    Revised the reproduced text of 37 CFR 1.1, 1.4, and 2.190.

    In subsection I.C, updated the mail stop for requests for certified or uncertified copies of patent and trademark documents and added a preference for requests to be made via the Certified Copy Center storefront.

    In subsection II, updated the addresses for maintenance fee payments and payments to replenish a deposit account.

    502

    Revised the reproduced text of 37 CFR 1.6.

    In subsection III, updated the listing of the types of patent application related correspondence that may be delivered to the specific location instead of the Customer Service Window.

    502.01

    Revised the reproduced text of 37 CFR 1.6.

    In the second paragraph, corrected “37 CFR 1.6(d)(1)-(7)” to “37 CFR 1.6(d)(2)-(7)” and “37 CFR 1.4(e) and (f)” to “37 CFR 1.4(f)”.

    In subsection I.B, updated the facsimile number for item (9), added a new number for a request for a retroactive filing license to item (10), and updated to reflect the name change from “Office of Public Records” to “Public Records Division” in item (13).

    502.02

    Revised the reproduced text of 37 CFR 1.4.

    In subsection I, deleted citations and references to the handwritten signature requirements of 37 CFR 1.4(e).

    In subsection II, deleted the citations and references to 37 CFR 1.4(e). Added a new paragraph setting forth the requirements for a signature created using a commercial signing system.

    502.03

    In subsection II, revised the process for submitting an internet authorization and clarified the types of communications that may and may not be submitted via email.

    In subsection III, replaced “Internet Email” with “Email”.

    In subsection V, replaced references to Internet Email, Outlook, and WebEx with corresponding generic language (e.g., USPTO communication or video conferencing tools). Additionally, clarified that video conferences must originate from USPTO links and are not permitted using links provided by the applicant.

    502.05

    Added an Editor Note reminding readers to review the Legal Framework for Patent Electronic System’s website for new revisions to the Legal Framework for Patent Electronic System.

    In subsection I.B.2, removed citation to 37 CFR 1.6(d)(1) from item (5).

    504

    Updated the guidance about the mechanism by which nonprovisional applications are assigned to an examiner.

    506

    Revised the reproduced text of 37 CFR 1.53.

    In subsection I.C, updated the types of submissions that may be excluded for the purpose of determining the application size fee.

    509

    In subsection II, deleted the paragraph requiring credit card payments to be submitted with a handwritten signature and added a paragraph to explain daily credit card payment maximums.

    509.01

    Revised the reproduced text of 37 CFR 1.25.

    In subsection II, updated the mailing address for submitting a payment to the Office to replenish a deposit account.

    509.02

    Revised the reproduced text of 37 CFR 1.27.

    In subsection VI, revised and expanded the list of situations that do not constitute a license so as to prohibit claiming small entity status by a person under 37 CFR 1.27(a)(1).

    509.03

    Revised the reproduced text of 37 CFR 1.27.

    509.04(a)

    In subsection I, revised the reproduced text of 37 CFR 1.29.

    In subsection I.B, updated the types of applications that are included in the application filing limit for the purposes of establishing micro entity status.

    509.04(b)

    Revised the reproduced text of 37 CFR 1.29.

    Revised to clarify that an applicant claiming micro entity status on the institution of higher education basis may not do so by relying on a government use license exception under 37 CFR 1.27(a)(4).

    510

    In subsection II, removed the reference to the File Information Unit and the access control procedures effective August 4, 2014.

    In subsection III, replaced “Deputy Commissioner for Patent Operations” with “Deputy Commissioner for Patents in their chain of command.”

    511

    In subsection III, revised to add Patent Center as an available electronic filing system.

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    CHAPTER 600:

    Passim

    Replaced instances of “PTO/SB/08A and 08B” with “PTO/SB/08.”

    601

    In subsection I, revised to incorporate guidance from ST.25 rulemaking and ST.26 rulemaking.

    In subsection III, added “Biotechnology applications, MPEP Chapter 2400” to the list of referenced MPEP sections.

    601.01

    Revised the reproduced text of 37 CFR 1.53 and 37 CFR 1.53 (pre‑PLT (AIA)).

    Deleted “Effective July 14, 2003” from the last paragraph.

    601.01(d)

    In subsection I, deleted “2007. See” from the first paragraph.

    601.01(g)

    In subsection I, deleted “2007. See” from the second paragraph.

    601.03(a)

    Added “See MPEP § 707.13 for remailing of returned Office correspondence” to the second paragraph.

    602.01(a)

    In subsection IV, replaced “PTO/AIA/09” with “PTO/AIA/11” to reflect the correct form.

    602.01(b)

    Replaced “PTO/SB/01A” with “PTO/SB/04” and added the website address for the forms on the USPTO website.

    602.01(c)

    In subsection III, added an example of inventorship overlap required by 35 U.S.C. 120.

    602.01(c)(1)

    In the introduction, clarified that requests for correction of inventorship are handled by the Office of Patent Application Processing.

    In subsection IV, added a statement clarifying that when an inventorship error in a provisional application is desired to be corrected after expiration of twelve months, a request under 37 CFR 1.48(d) may still be filed with OPAP.

    602.01(c)(2)

    Revised “As of September 16, 2012, it is no longer necessary to have distinct procedures … names of the inventors” to “The procedures … names of the inventors are not distinct” in the second paragraph.

    602.03

    Clarified that examiners are not required to review inventor’s oaths or declarations that are filed in non-reissue applications.

    602.04

    In subsection I, revised the instructions for obtaining a list of the current member countries that are parties to the Hague Convention.

    602.08(b)

    In subsection III.A, deleted “Effective September 16, 2012” from the first and last paragraphs.

    In subsection III.B, deleted “Effective September 16, 2012” from the first paragraph.

    607

    In subsection II, revised to incorporate guidance from ST.25 rulemaking and ST.26 rulemaking.

    In subsection III, clarified the applicability of excess claim fees.

    In subsection V, deleted “new” from the last paragraph.

    607.02

    In subsection I, deleted reference to the effective date of an amendment to 37 CFR 1.26(a).

    608.01

    Revised to incorporate rules and guidance from ST.25 rulemaking and ST.26 rulemaking.

    In subsection I,“EFS-Web Legal Framework” with “Legal Framework for Patent Electronic System.”

    In subsection I, replaced “mechanical printer” with “machine printer” and added a recommendation to use black colored font for text on a white background for electronic submissions.

    In subsection II, deleted the reference to the effective date of an amendment to 37 CFR 1.52(c).

    In subsection VII, revised form paragraph 7.29.04.

    608.01(a)

    Revised to incorporate rules and guidance from ST.25 rulemaking and ST.26 rulemaking.

    Revised form paragraphs 6.01 and 6.02.

    608.01(c)

    Replaced “U.S. patent classification” with “Cooperative Patent Classification (CPC)”.

    608.01(n)

    In subsection III, revised form paragraph 7.36.01.

    608.01(p)

    In subsection II, added a reference to Properly Presenting Prophetic and Working Examples in a Patent Application, 86 FR 35074 (July 1, 2021).

    608.02

    In subsection V, added a cross reference to MPEP § 2920.04(b) for international design reproductions.

    608.05

    Revised to incorporate rules and guidance from ST.25 rulemaking and ST.26 rulemaking.

    Revised the title of subsection I to replace “EFS-WEB” with “THE USPTO PATENT ELECTRONIC FILING SYSTEM.”

    In subsection III, revised form paragraphs 6.60.01, 6.60.02, 6.61.01, 6.61.02, 6.62, 6.70.01, 6.70.02, 6.71.01, 6.71.02, and 6.72.01-6.72.05, and added a cross reference to MPEP §§ 608.05(a)-(c) for additional detail on the submission of “Sequence Listing”, “Sequence Listing XML”, “Large Tables”, or “Computer Program Listing Appendix”.

    608.05(a)

    Revised to incorporate rules and guidance from ST.25 rulemaking.

    In subsection II, clarified that the USPTO prefers specifications and drawings are submitted electronically via the Office patent electronic filing system and that physical paper filings will be subject to a non-electronic filing fee.

    Revised form paragraphs 6.64.01 and 6.64.02.

    Revised the heading for subsection III to “Requirements for a ‘Computer Program Listing Appendix’”. Previous subsection IV and form paragraph 6.64.04 were deleted.

    Deleted subsection IV and form paragraph 6.64.04.

    608.05(b)

    Revised to incorporate rules and guidance from ST.25 rulemaking.

    In subsection I, revised the section title to “ASCII Plain Text Submissions of ‘Large Tables’ and Treatment of Lengthy Tables in a Specification for Patents and Patent Application Publications”.

    In subsection II, revised form paragraphs 6.63.01 and 6.63.02.

    608.05(c)

    Revised to identify the applicable rules for submission of nucleotide and/or amino acid sequences as a “Sequence Listing” as defined in 37 CFR 1.821(a) for applications filed before July 1, 2022 or as a “Sequence Listing XML” as defined in 37 CFR 1.831(b) for applications filed on or after July 1, 2022, and to provide appropriate cross-references to MPEP Chapter 2400 for pertinent information.

    609

    Added a statement clarifying that an information disclosure statement (IDS) may be filed using form PTO/SB/08.

    Replaced an instance of “EFS-Web Framework” with “Legal Framework for Patent Electronic System.”

    609.01

    Deleted “(including kind code) from item (B)(1)(iv) of the requirements for the IDS listing.

    Added to item (B)(1)(v) of the requirements for the IDS listing a statement clarifying that when no page numbers are supplied, it is understood that all of the pages of the publication are the relevant pages.

    Added to item (B) of the steps an examiner should take after reviewing the IDS for compliance a statement clarifying that if a bona fide attempt is made to comply with the IDS content requirements, but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.

    609.03

    Revised form paragraphs 6.53 and 6.54.

    609.04

    Revised section title to “Content and Timing Requirements for an Information Disclosure.”

    609.04(a)

    Added a statement clarifying that if a bona fide attempt is made to comply with IDS content requirements, but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.

    Replaced instances of “PTO/SB/08A and 08B” with “PTO/SB/08.”

    In subsection I, deleted the parenthetical example that the Office may discard any non-compliant third party submission under 37 CFR 1.99.

    In subsection I, added a statement clarifying that when no page numbers are supplied in an IDS, it is understood that all of the pages of the publication are the relevant pages.

    In subsection I, clarified the requirements for seeking consideration of documents other than the specification and drawings of a pending U.S. application cited in an IDS.

    In subsection I, clarified that the publisher of a publication obtained from the Internet may be evident from the URL and added a cross-reference to MPEP § 707.05(e) for examples of listing documents retrieved from the Internet.

    In subsection II, clarified that there is no requirement for a copy of each U.S. patent or U.S. patent application publication listed in an IDS unless required by the Office.

    In subsection II, clarified the circumstances under which electronic means or medium for filing IDSs is permitted.

    609.04(b)

    In subsection I, clarified that an IDS may be timely filed on the next succeeding business day if the last day of the three months period set forth in 37 CFR 1.97(b)(1) and (b)(2) falls on a Saturday, Sunday, or a federal holiday within the District of Columbia.

    In subsection II, clarified that an information disclosure statement filed on the same day as or after the mailing date of an Ex parte Quayle action or notice of appeal must comply with the provisions of  37 CFR 1.97(d).

    In subsection III, clarified that an IDS filed after the examiner has reached a final determination on the patentability of the claims presented for examination will be handled by the examiner as a “Printer Rush” as set forth in MPEP § 1309.02.

    In subsection V, clarified that a statement under 37 CFR 1.97(e) may be timely filed on the next succeeding business day if the last day of the three months period set forth in 37 CFR 1.97(e)(1) and (e)(2) falls on a Saturday, Sunday, or a federal holiday within the District of Columbia.

    In subsection VI, amended to the subsection title to “EXTENSIONS OF TIME (37 CFR 1.97(f)) AND BONA FIDE ATTEMPT “ and moved form paragraph 6.51 from its previous location in MPEP § 609.05(a).

    609.05(a)

    Revised form paragraph 6.49.10.

    Removed form paragraph 6.51, which was relocated to MPEP § 609.04(b), subsection VI.

    609.07

    Deleted “As of May of 2002, IDSs” and “As of January 2007, ” from the first paragraph.

    609.08

    Replaced “As of January 18, 2006, the Office began processing of” with “[t]he USPTO electronically processes” in the first paragraph.

    Replaced “mailed” with “provided” in the first paragraph to clarify that copies of an electronically processed IDS may not be mailed.

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    CHAPTER 700:

    704.01

    Revised to clarify that an examiner should review the search of a previous examiner to ensure the search is thorough and complete and added a cross reference to MPEP § 904.02.

    704.11(a)

    Revised “applicant derived the invention” to “the inventor derived the invention” and “applicant’s invention” to “the claimed invention” to reflect the AIA definition of applicant and inventor.

    704.14(a)

    Revised form paragraphs 7.114, 7.116, and 7.118.

    706.07

    Revised form paragraph 7.39.01.

    706.07(a)

    Revised the discussion regarding making a next Office action final when a reference’s subject matter is excepted or disqualified as prior art because of a joint research agreement.

    Revised form paragraphs 7.40.02.aia and 7.40.02.fti.

    706.07(b)

    Added a note regarding applicants not being able to use an RCE to switch inventions as a matter of right and cross references to 37 CFR 1.145 and MPEP § 706.07(h), subsection VI.

    706.07(h)

    In subsection III, revised what technical support personnel in the TC verify when an RCE is initially processed including verifying that a compliant inventor’s oath or declaration for each inventor was submitted prior to or with the RCE for national stage applications under 35 U.S.C. 371. Added a paragraph stating that an RCE will not be processed if the application is undergoing court review at the Federal Circuit or in federal district court with a cross reference to subsection XII.

    In subsection XI.A, added a sentence regarding additional time periods during which an RCE may be timely filed after a new ground of rejection was made by the Board and after a request for rehearing has been filed. Revised to clarify that res judicata applies to both new grounds of rejections and any other rejection affirmed in a Board decision when an RCE is filed.

    707

    Revised form paragraphs 7.100, 7.101, and 7.102.

    707.05(a)

    Revised “eRed Folder” to “action folder” and “handed in” to “submitted”.

    Revised form paragraph 7.82.03.

    707.05(f)

    Changed title from “Reserved” to “Non-Patent Documents Having a Lengthy Citation” and added guidance regarding how examiners should cite non-patent documents having lengthy citations on form PTO-892.

    707.07(f)

    Revised form paragraphs 7.37.05, 7.37.07, and 7.37.08.

    707.08

    Revised form paragraphs 7.100, 7.101, and 7.102.

    707.13

    Revised where a returned Office action will be mailed if the Office action was originally mailed to the correct correspondence address, and added a cross reference to MPEP § 710.06 for when it is appropriate to reset or restart a reply period.

    Revised “IFW” to “electronic file”.

    708.01

    Revised the reproduced text of 37 CFR 1.102 to reflect that 15,000 requests for prioritized examination could be accepted in any fiscal year.

    708.02

    Revised the reproduced text of 37 CFR 1.102 to reflect that 15,000 requests for prioritized examination could be accepted in any fiscal year.

    708.02(a)

    In subsection VIII.C, revised to incorporate changes from ST.25 rulemaking and ST.26 rulemaking.

    In subsection VIII.C, replaced “notice of informal application” with “information notice to applicant” in the list of example notices that might cause dismissal of a petition to make special.

    In subsection IX, revised form paragraph 7.71.AE.

    708.02(b)

    In the preamble text before subsection I, revised the reproduced text of 37 CFR 1.102 and associated discussion to reflect that 15,000 requests for prioritized examination could be accepted in any fiscal year.

    In subsection I.A.4, revised to reflect that 15,000 requests for prioritized examination could be accepted in any fiscal year.

    In subsection I.B.4, updated the citation from the “EFS-Web legal framework at 74 FR 55200 (October 27, 2009)” to the “Legal Framework for Patent Electronic System ((www.uspto.gov/patents-application-process/filing-online/legal-framework-efs-web) (October 2019))”.

    709

    In subsection I.A, added sentences stating that the USPTO may grant a suspension of action under 37 CFR 1.103(a) for a specified period not to exceed six months, and the suspension will begin on the day the request is filed. Added a new paragraph with examples explaining what may be considered good and sufficient cause. Added examples of what may not be considered good and sufficient cause.

    In subsection I.C, revised last sentence of preamble text before subsection I.C.1 to state that “the application will automatically be queued for docketing based upon the order in which it was filed” after the suspension period under 37 CFR 1.103(d) has expired.

    In subsection II, deleted “TC Director of work group 3640” and added “TC Director who oversees Licensing and Review” when discussing who decides a suspension of action under 37 CFR 1.103(f).

    710

    Deleted “Technology Center Director of work group 3640” and added “Technology Center Director who oversees Licensing and Review” when discussing who decides an extension of time under 35 U.S.C. 267.

    710.01(a)

    In the first paragraph, revised “date stamped or printed” to “notification or mail date printed”.

    In the fourth paragraph, revised to state that MPEP § 711.04(a) provides “guidance on the date of abandonment, including examples.”

    In the sixth paragraph, revised to state that “[t]he date of receipt of a reply to an Office action is recorded in the electronic file as the receipt date of the reply paper.”

    710.02(e)

    In subsection II, clarified that failure to file a reply during the shortened statutory period results in abandonment of the application “unless the time is extended under the provisions of 37 CFR 1.136”.

    710.05

    Added “Juneteenth National Independence Day, June 19” to the list of federal holidays.

    Added an example regarding calculating the last day that a reply will be considered timely when the last day of a period to reply falls on a Saturday, Sunday, or Federal holiday, and added a cross reference to MPEP § 711.04(a) for more examples of calculating the last day.

    711.02

    Added a second paragraph regarding considerations required to determine if an application is abandoned with cross references to MPEP §§ 512, 513, 710 et seq, and 711.04(a).

    Added that an application is abandoned when an amendment is filed after the expiration of the statutory period “and is not considered timely under 35 U.S.C. 21 and 37 CFR 1.7” and that the examiner should notify the applicant or attorney “or agent of record” at once that the application has been abandoned.

    Deleted the next to last paragraph whose subject matter was incorporated into the added second paragraph.

    711.03(c)

    Clarified that a petition to revive is under 37 CFR 1.137.

    In subsection II, added a sentence that “any applicant filing a petition to revive an abandoned application more than two years after the date of abandonment must provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional.”

    In subsection II.C, revised to include a discussion of the requirement for additional information when a petition to revive is filed more than two years after the date the application became abandoned. Deleted “or unavoidable” because the practice of reviving due to an unavoidable delay has been discontinued.

    In subsection II.D, deleted “unavoidable or” because the practice of reviving due to an unavoidable delay has been discontinued.

    711.04

    Revised to clarify that access to non-Image file Wrapper abandoned published applications is through the Patent and Trademark Copy Fulfillment Branch Certified Copy Center and add corresponding contact information.

    Revised “Office of Public Records” to “Patent and Trademark Copy Fulfillment Branch of the Public Records Division”.

    711.04(a)

    Added examples of calculating the date of abandonment.

    713

    Clarified that any and all records or communications received in connection with an interview “via any communication mode” are to be made of record.

    713.01

    In subsection I, revised to state that when an examiner is working remotely and there is no opportunity to have an in-person interview, an interview may be conducted via telephone “or electronic communication using USPTO web-based collaboration tools”.

    In subsection II.A, added a new paragraph that states that the internet authorization must be submitted on a separate paper to be entitled to acceptance.

    In subsection III, clarified that a “video conference is an electronic meeting, using USPTO web-based collaboration tools” and that the examiner should coordinate the video conference using “USPTO web-based collaboration tools”.

    In subsection IV, deleted references to specific communication modes because the guidance provided applies to all interviews regardless of communication mode. Added references to “agent” and “applicant” to cover all of the people authorized to conduct interviews. Revised to state that when a complete reply to a first action includes a request for an interview, such an interview request should be granted “if it appears that the interview would result in expediting the allowance of the application.” Deleted obsolete language regarding taking a case up as special.

    In subsection V, deleted references to specific types of video playing equipment.

    In subsection VII, revised to eliminate references to specific types of collaboration tools. Revised to state that “Examiners must only use USPTO-supplied equipment and software for interviews” and “[a]ll video conferences for interviews MUST originate or be hosted by USPTO personnel.”

    713.02

    In the preamble text before subsection I, deleted reference to the discontinued Full First Action Interview Pilot Program.

    713.04

    In the preamble text before subsection I, clarified that any interview (including any electronic communication that discussed the merits) must be made of record. Revised to state that for an applicant-initiated interview, the substance of the interview must be made of record in the reply to an outstanding action or within the set period if no reply is outstanding. Replaced reference to forms PTOL-413 and PTOL-413B with form PTOL-413/413b and associated discussion to reflect the changes in the form. Deleted the sentence regarding attaching a copy of a completed Applicant Initiated Interview Request form PTOL-413A to the Interview Summary form. Revised text to state that an Interview Summary form may be provided at the end of the interview or by mailing it to the applicant’s correspondence address. Deleted the reference to “WebEx”.

    In subsection I, deleted the word “paper” in “a paper copy” in item (H).

    713.05

    Revised “paper” to “submission” when referring to the form of proper authority that should be on file in order to grant an interview.

    Revised “via EFS-Web” to “electronically”.

    Revised the last paragraph to delete the reference about putting an application in special status to reflect current procedures.

    713.07

    Revised text to more generically refer to placing unnecessary material out of view prior to an interview.

    714

    Revised reproduced text of 37 CFR 1.121 and associated text in subsection II.B to reflect changes in the ST.25 and ST.26 rulemakings.

    714.01(d)

    Revised to state that an amendment submitted on behalf of a juristic entity must be signed by a patent practitioner with a cross reference to 37 CFR 1.33(b)(3) and MPEP § 714.01(a).

    714.05

    Replaced reference to removed section MPEP § 903.08(d) with reference to new section MPEP § 909.01(c).

    714.12

    Revised “exclusion” and “excluded” to “disqualification” and “disqualified” under pre-AIA 35 U.S.C. 103(c) to be consistent with the language in 37 CFR 1.131(c).

    Deleted “because if the exception or exclusion is established, the propriety of the rejection is obviated as a matter of law” from the discussion of consideration of applicant’s submission concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art disqualification under pre-AIA 35 U.S.C. 103(c) after a final rejection.

    714.13

    In subsection II, revised “exclusion” to “disqualification” of prior art under pre-AIA 35 U.S.C. 103(c) to be consistent with the language in 37 CFR 1.131(c). Deleted “because if the exception or exclusion is established, the propriety of the rejection is obviated as a matter of law” from the discussion of consideration of applicant’s submission concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art disqualification under pre-AIA 35 U.S.C. 103(c) after a final rejection.

    In subsection IV, revised “compact disks (CDs)” to “read-only optical discs”.

    714.16(d)

    Moved the title of subsection I down three paragraphs.

    In subsection I, revised to add a discussion that a recommendation must be forwarded to the supervisory patent examiner for consideration and approval for an amendment under 37 CFR 1.312 which affects the disclosure of the specification, adds claims, or changes the scope of any claim. Revised form paragraphs 7.85 and 7.87.

    In subsection II, revised to add a discussion that an examiner may approve the entry of an amendment under 37 CFR 1.312 concerning merely formal matters without the signature of a supervisory patent examiner, and to add a sentence stating that form paragraphs 7.85 and 7.87 may also be used to indicate entry or nonentry, respectively.

    714.16(e)

    Revised to state that a Response to Rule 312 Communication form PTO-271 must be forwarded to the supervisory patent examiner for consideration, approval, and mailing when recommending to enter an amendment in part. Revised form paragraph 7.86.

    715

    Revised form paragraph 7.63.fti.

    715.01(b)

    Revised “applicant” to “inventor” to reflect the AIA definition of applicant and inventor.

    715.01(c)

    Revised the title from “Reference Is Publication of Applicant’s Own Invention” to “Reference Is Publication of Inventor’s Own Invention” to reflect the AIA definition of applicant and inventor.

    715.03

    Revised “applicant” and “applicant’s” to “inventor” and “inventor’s” to reflect the AIA definition of applicant and inventor.

    715.07

    In subsection I, revised “applicant” to “inventor” to reflect the AIA definition of applicant and inventor.

    716

    Revised the title from “Affidavits or Declaration Traversing Rejections, 37 CFR 1.132” to “Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections” to indicate that this section covers other evidence in addition to affidavits or declarations under 37 CFR 1.132. Revised the first paragraph to include a discussion about other evidence and that publications may be evidence.

    Added two new paragraphs discussing requirements for affidavits and declarations.

    716.01(b)

    Added two new paragraphs regarding determining if there is a nexus between the merits of the claimed invention and the asserted objective evidence with citations to and discussions of Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 2019 USPQ2d 483355 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988) and In re Huang, 100 F.3d 135, 40 USPQ2d 1685 (Fed. Cir. 1996) ); In re Kao, 639 F.3d 1057, 98 USPQ2d 1799 (Fed. Cir. 2011); WBIP, LLC v. Kohler Co., 829 F.3d 1317, 119 USPQ2d 1301 (Fed. Cir. 2016); Fox Factory, Inc. v. SRAM, LLC, 813 Fed. Appx. 539, 2020 USPQ2d 10546 (Fed. Cir. 2020); Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 2021 USPQ2d 875 (Fed. Cir. 2021); and Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 2021 USPQ2d 866 (Fed. Cir. 2021).

    716.02(a)

    Corrected the citation to In re Corkill, 771 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985).

    716.02(g)

    Reserved section and added an Editor Note that information was moved to MPEP § 716.

    716.03

    In subsection I, added cross references to MPEP §§ 716.01(b) and 2145 for more guidance on determining if the nexus requirement is met.

    716.03(a)

    In subsection I, added cross references to MPEP §§ 716.01(b) and 2145 for more guidance on determining if the nexus requirement is met.

    716.03(b)

    In subsection IV, added parenthetical to the citation to Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985) stating that the opinion had been overruled on other grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 50 USPQ2d 1672 (Fed. Cir. 1999).

    716.04

    In subsection I, revised “applicant” to “the inventor” to reflect the AIA definition of applicant and inventor. Added citation to Ex parte Thompson, Appeal 2011-011620 (March 21, 2014).

    In subsection III, corrected the citation to In re Tiffin.

    716.06

    Revised to include additional case law regarding the secondary evidence of copying including citations to and discussions of Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 73 USPQ2d 1225 (Fed. Cir. 2004); Wyers v. Master Lock Co., 616 F.3d 1231, 95 USPQ2d 1525 (Fed. Cir. 2010); and Liqwd, Inc. v. L’Oreal USA, Inc., 941 F.3d 1133, 1139 (Fed. Cir. 2019).

    Moved from the last paragraph to a newly added second paragraph citations to and discussions of Dow Chem. Co. v. American Cyanamid Co., 816 F.2d 617, 2 USPQ2d 1350 (Fed. Cir. 1987) and Panduit Corp. v. Dennison Manufacturing Co., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985).

    Added parenthetical to the citation to Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985) stating that the opinion had been overruled on other grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 50 USPQ2d 1672 (Fed. Cir. 1999).

    716.07

    Corrected the citation to In re Yale, 434 F.2d 666, 168 USPQ 46 (CCPA 1970).

    717

    Revised “exclusion” to “exception” to be consistent with 35 U.S.C. 102(b).

    717.01(a)(1)

    Corrected the reference to 37 CFR 1.132 for affidavits or declarations of attribution.

    717.01(f)

    Added that an examiner should indicate an admitted affidavit or declaration on the Office Action Summary, Notice of Allowability, or Advisory Action cover sheet, as appropriate.

    719.03

    Replaced reference to removed section MPEP § 903.08(b) with reference to new section MPEP § 909.01(b).

    719.05

    In subsection II.A, revised the “SEARCH NOTES” example (K) and added an example (L).

    724.04(b)

    Deleted “any portion or” from item (E) to clarify that all of the submitted information must be found to not be material to patentability in order to have the petition to expunge granted.

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    CHAPTER 800:

    Passim

    Changed “common inventor” to “common (joint) inventor” for consistency with text throughout the chapter.

    803

    In subsection I, revised to clarify that the serious burden requirement is a serious “search and/or examination” burden.

    In subsection II, added an explanation of serious examination burden as distinguished from serious search burden.

    803.02

    In subsection III.A, added a reminder that an election of species requirement is a type of restriction requirement.

    In subsection III.B, added “searched and” prior to “examined together” in the first paragraph.

    In subsection III.C.2, revised to clarify that burden required for a restriction is a “search and/or examination” burden.

    803.05

    In the second paragraph, changed “or an election of species” to “including an election of species” to clarify that an election of species is a type of restriction requirement.

    804

    In the first paragraph, updated the basis for double patenting to remove emphasis on the order of filing and also updated the citation to In re Van Ornum.

    In the second paragraph, revised the discussion of common inventorship or ownership needed for double patenting and added examples.

    In the third paragraph, moved the sentence discussing the focus of double patenting from the second paragraph.

    In the fourth paragraph, revised the citation to In re Van Ornum and the explanation of how a terminal disclaimer includes a provision to help prevent multiple infringement suits by different assignees.

    Updated charts I-A_AIA, I-A_FTI, I-B_AIA, I-B_FTI, II-A_AIA, II-A_FTI, II-B_AIA, and II-B_FTI and the corresponding description of the charts found in the sixth and seventh paragraphs.

    In subsection I.A, revised to clarify the explanation of scenarios in which double patenting may exist.

    In subsection I.B, revised to clarify the explanation of when copending applications might raise an issue of double patenting and added an explanation of when an application can be utilized as a double patenting reference.

    In subsection I.B.1, added “compliance with” in the second paragraph to clarify that objections and requirements as to form must be traversed when raised. In the third paragraph, deleted the example of when a terminal disclaimer is required and added a citation to MPEP § 1490.

    In subsection I.B.1(a), amended the title to “Patent Term Filing Date for Original Utility or Plant Applications” and amended the section to explain how to determine the patent term filing date of an application.

    In subsection I.B.1(b), amended the title to add “a utility or plant” before application and added a new paragraph explaining that the following subsections (i)-(iv) may apply when two or more applications are involved.

    In subsection I.B.1(b)(i)-(iii), amended the title and the subsection to explain how to treat a provisional nonstatutory double patenting rejection when the application under examination has an earlier, same, or later patent term filing date than the reference application, respectively.

    In subsection I.B.1(b)(iv), added a statement that a rejection may be made final, if otherwise appropriate, when it re-issues provisional rejection as a nonprovisional rejection following a PTAB decision that does not include an opinion on the provisional nonstatutory double patenting rejection.

    Created new subsection I.B.1(c) discussing treatment of provisional nonstatutory double patenting rejections in design applications and utility or plant applications filed prior to June 8, 1995.

    In subsection I.B.2 revised to clarify the explanation regarding provisional statutory double patenting rejections in light of changes made to subsection I.B.1 above.

    In subsection I.C, revised to clarify the explanation of scenarios in which double patenting may exist.

    In subsection I.D, revised the discussion of the Uruguay Round Agreement Act and inserted an explanation of the changes resulting from Patent Law Treaties Implementation Act of 2012.

    In subsection I.E, revised to clarify the explanation of scenarios in which double patenting may exist. Additionally, clarified that subject matter excepted under 35 U.S.C. 102(b)(2)(C) may not be used as a secondary teaching in a nonstatutory double patenting rejection.

    In subsection II.A, revised the examiner notes of form paragraphs 8.31 and 8.32 to align with statutory language.

    In subsection II.B, added additional explanation of how to determine when a claimed invention is anticipated by, or an obvious variation of, an invention claimed in the patent and added a citation to Pfizer, Inc. v. Teva Pharms. USA, Inc.

    Relocated previous subsection II.B.1 into new subsection II.B.2.

    Relocated previous subsection II.B.2 into new subsection II.B.3 and revised the subsection to remove “typically” from the second paragraph, to add a reminder that subject matter disclosed in a reference patent or application may be used to properly construe the reference’s claims, and to add a statement clarifying that any secondary reference used to support an obviousness analysis for a nonstatutory double patenting rejection must be prior art.

    Relocated previous subsection II.B.2(a) into new subsection II.B.1. Revised the subsection to clarify that no part of a reference patent or application may be used as if it were prior art but that subject matter disclosed in a reference patent or application may be used to properly construe the claims of the reference.

    Relocated previous subsection II.B.2(b) into new subsection II.B.4. Revised the subsection to include consideration of the patent term filing date and clarify the explanation of In re Berg. Additionally, revised form paragraphs 8.33, 8.34, 8.35, 8.36, and 8.37.

    Relocated previous subsection II.B.2(c) into new subsection II.B.5. Revised the subsection to include consideration of the patent term filing date, clarified the discussion of In re Goodman, and updated parallel citations for several court decisions. Additionally, replaced “an obvious type” with “nonstatutory” in the third paragraph for consistency with the remainder of the chapter.

    Relocated previous subsection II.B.3 into new subsection II.B.6. Added a citation to In re Kaplan at the end of the fourth paragraph. Additionally, revised the examiner notes of form paragraphs 8.38 and 8.39 to align with statutory language.

    Relocated previous subsection II.B.4 into new subsection II.B.7.

    In subsection IV, amended the title and subsection text by replacing “exclusion” with “disqualification” and replaced “effective filing date” with “pre-AIA 35 U.S.C. 102(e) date” in the third paragraph. Additionally, revised the second paragraph to clarify that prior art disqualified under pre-AIA 35 U.S.C. 103(c) may still form the basis of a double patenting rejection.

    In subsection V, amended the second paragraph to clarify that the subject matter excepted under 35 U.S.C. 102(b)(2)(C) is not available as prior art under 35 U.S.C. 102(a)(2) for an anticipation and/or obviousness rejection, and also may not be used as a secondary reference in a nonstatutory double patenting rejection, but that the claims of a reference excepted under 35 U.S.C. 102(b)(2)(C) may still be the basis for a double patenting rejection, whether statutory or nonstatutory. Additionally, inserted “subject matter in” into the first sentence.

    In subsection VI, revised the explanation of when examiners may rely on the joint research provisions to apply a nonstatutory double patenting rejection.

    804.01

    In item (E) of the fifth paragraph, added “pertinent” to clarify that the pertinent part of a restriction requirement must be withdrawn for the prohibition against nonstatutory double patenting rejections under 37 CFR 1.121 to not be applicable.

    804.02

    In subsection VI, inserted an explanation of the changes resulting from Patent Law Treaties Implementation Act of 2012. Additionally, added an explanation of the applicability of benefit claims to the patent term filing date and a citation to MPEP § 804.

    804.03

    In the introduction, added a new paragraph explaining that this section pertains only to double patenting analysis when the subject matter in the reference is excepted as prior art under 35 U.S.C. 102(b)(2)(C) or the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c).

    In subsection II.A, revised to clarify how to determine whether applications or patents are commonly owned. Additionally, clarified that subject matter excepted under 35 U.S.C. 102(b)(2)(C) may not be used as a secondary teaching in a nonstatutory double patenting rejection.

    In subsection II.B, revised the discussion of the differences between 35 U.S.C. 102(c) and the 2004 CREATE Act provisions (pre-AIA 35 U.S.C. 103(c)).

    In subsection II.C, revised to clarify that until a reference is excepted as prior art as defined in 35 U.S.C. 102(c) or disqualified as prior art as defined in pre-AIA 35 U.S.C. 103(c)(2) and (3), the examiner should not apply a double patenting rejection based on a joint research agreement.

    In subsection III, inserted “or before” into the second paragraph to clarify when common ownership or an obligation of assignment must exist for 35 U.S.C. 102(b)(2)(C) to be applicable. In the second paragraph, changed “is disqualified” to “cannot be used.”

    In subsection IV, moved text previously preceding form paragraph 7.15.aia to the beginning and further revised to clarify the explanation of how the applicability of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) affects whether to make a rejection under 35 U.S.C. 102 and 103 or on the basis of double patenting. Revised the paragraph preceding form paragraph 7.15.01.aia to clarify when a provisional rejection under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) should be considered.

    Revised form paragraphs 8.27.aia, 8.27.fti, 8.28.aia, 8.28.01.aia, 7.15.01.aia, 7.15.01.fti, 7.15.02.aia, 7.15.02.fti, 7.21.01.aia, 7.21.01.fti, 7.21.02.aia, and 7.21.02.fti.

    806.01

    Revised to clarify when a provisional election of a single species may be required.

    806.04(b)

    Clarified the explanation of distinctness for the purpose of a restriction requirement.

    806.05(c)

    Revised to add an explanation of serious examination burden.

    Revised form paragraph 8.15.

    806.05(d)

    Revised to add an explanation of serious examination burden.

    Revised form paragraph 8.16.

    806.05(j)

    Added an explanation of mutually exclusive in the context of restriction practice.

    Revised form paragraph 8.16.

    806.06

    Updated the serious burden requirement to be a “search and/or examination” burden.

    808

    Updated the serious burden requirement to be a “search and/or examination” burden.

    808.01(a)

    Updated the serious burden requirement to be a “search and/or examination” burden.

    808.02

    Updated the serious burden requirement in the second paragraph to be a “search and/or examination” burden and added a new paragraph explaining how to demonstrate serious examination burden.

    809.02

    Updated the title to “Election of Species Required.”

    809.02(a)

    Revised form paragraphs 8.01 and 8.02.

    809.03

    Revised form paragraph 8.12.

    811

    Updated the serious burden requirement to be a “search and/or examination” burden.

    812

    Updated the procedure for determining who should make a restriction requirement.

    812.01

    Added new form paragraph 8.23.03 and a paragraph explaining its proper use.

    Updated the process for documenting a telephone restriction, performing a C* classification challenge if required, and incorporating the restriction into the next Office action. Also clarified that a reviewing primary examiner may approve telephone restrictions by examiners without negotiation authority.

    814

    In the first paragraph, replaced “continuing” with “divisional” to clarify that only inventions claimed in a divisional application may potentially be subject to the prohibition against double patenting rejections under 35 U.S.C. 121.

    815

    Updated the procedure for making a restriction requirement complete by consulting with examiners who regularly examine technology when some of the claimed inventions are classifiable in a technology the original examiner does not examine.

    817

    Revised form paragraphs 8.08, 8.09, 8.10, 8.11, 8.21, 8.27.aia, 8.28.aia, and 8.23.02.

    818

    Revised to clarify that election may include designation of patentably distinct species, or of a group of patentably indistinct species and updated the serious burden requirement to include be a “search and/or examination” burden.

    818.01

    Replaced “the” with “any” in the second paragraph to clarify that applicant need not point out supposed errors if none are present.

    818.01(c)

    In the first paragraph, inserted “including an election of species requirement” to clarify that an election of species is subject to the same requirements to preserve the right to petition as any other type of restriction requirement.

    818.02(b)

    Added “or a group of patentably indistinct species” to clarify that an election of species may potentially include more than one single species.

    819

    Added a statement clarifying that the applicant may not disaffirm or change their election, as a matter of right, after making an oral election and receiving an Office action based upon that oral election in a pending application and a citation to 37 CFR 1.142(b).

    821

    Revised to indicate the circumstances under which the examiner should submit a C* classification challenge after an election.

    821.02

    Revised to explain when claims that are ineligible for rejoinder may be canceled by examiner’s amendment.

    821.03

    Revised form paragraph 8.04.

    Added a statement that failure to request reconsideration of an election by original presentation requirement should be treated as if the election was made without traverse.

    Added a new paragraph explaining the procedure when the examiner finds all elected claims allowable following the amendment that added claims drawn to a new invention.

    In the paragraph preceding form paragraph 8.26, revised to clarify the procedure for notifying the applicant that an amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention is non-responsive.

    In the last paragraph, added “or a group of patentably indistinct species” and “or group” to clarify that an election of species may potentially include more than one single species.

    821.04

    In the fourth paragraph, delete “continuation or” and added a citation to MPEP § 821.04(a) to clarify that only inventions claimed in a divisional application may potentially be subject to the prohibition against double patenting rejections under 35 U.S.C. 121.

    Added a new last paragraph explaining that the examiner should reconsider whether the C* classification picture is correct upon rejoinder of a nonelected invention.

    821.04(a)

    In the first paragraph, replaced “continuing” with “divisional” and added an explanation to clarify that only inventions claimed in a divisional application with consonance may potentially be subject to the prohibition against double patenting rejections under 35 U.S.C. 121.

    In the second paragraph, added “in its entirety” to clarify that the restriction is entirely withdrawn when all claims to the nonelected invention are rejoined.

    In the paragraph preceding form paragraph 8.49, inserted “still” before “withdrawn” to clarify that the nonelected claims were previously withdrawn and are not being rejoined.

    Revised form paragraphs 8.45, 8.49, 8.50, 8.46, 8.47, and 8.47.01.

    821.04(b)

    Revised form paragraphs 8.42 and 8.43.

    822

    Revised the two paragraphs preceding form paragraph 8.29 to clarify the procedure for handling patentably indistinct claims in copending applications.

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    CHAPTER 900:

    900

    Revised title of chapter to “Prior Art, Search, Classification, and Routing”.

    902

    Revised to clarify that U.S. utility patents and U.S. utility patent application publications no longer receive classifications within the U.S. Patent Classification System (USPC) and that the USPC database for utility areas is now a static searchable database.

    Revised to add that U.S. design and plant patents and U.S. plant Patent Application Publications will continue to receive classification within the USPC.

    902.01

    Added first paragraph stating that the USPC is a static system and no longer updated for utility classes but that the USPC remains active for plant and design classes.

    Revised to clarify that “The Manual of Classification” is no longer updated, as of December 31, 2014.

    902.02

    Revised to indicate that all classes with the USPC include definitions.

    902.03

    Revised to state that U.S. design and plant patents and U.S. plant patent application publications receive a designated USPC classification while U.S. utility patents and U.S utility patent application publications do not.

    902.03(a)

    Removed reference to specific file format types available on the Office of Patent Classification Home Page.

    Updated locations within the Office of Patent Classification Home Page of the index to the USPC system, class definitions, and class schedules.

    902.03(b)

    Removed reference to specific file format types available on the Office of Patent Classification Home Page.

    Added “CPC schedules” to the list of links found on the Intranet Classification Home Page.

    902.03(e)

    Revised to add the Web-Based Patents End-to-End Search tool (SEARCH) as an available automated search tool for examiners.

    Removed reference to “the ‘Patent Automation’ folder in Microsoft Outlook.”

    903

    Added a statement that all utility patents and patent applications receive a classification under CPC and that only design and plant applications continue to receive classification under USPC.

    Added a reference to MPEP § 905.

    903.02

    Revised title to “Basis and Principles of Classification in USPC”.

    Revised to replace “classification” with “classification within USPC”.

    903.03

    Revised to replace reference to “the classification” to “the USPC classification”.

    903.04

    Revised to clarify that most patent applications filed on or after November 29, 2000, are published as patent application publication.

    Added a paragraph stating that U.S. utility patents and U.S. utility patent application publications no longer receive classifications within the USPC and that only U.S. design and plant patents and U.S. plant patent application publications will continue to receive classification within the USPC.

    Revised the discussion of classifying patent application publications to refer only to plant patent application publications.

    903.05

    Revised title to “Addition, Deletion, or Transfer of U.S. Design Patents by USPC Classification”.

    Revised to updated the headings for locating the Patent Post Publication Classification Manager and the PGPub Post Publication Classification Manager on the intranet Classification Home Page.

    Added a sentence clarifying that the Classification Manager tools are only available for design patents.

    903.07

    Revised title to “Classifying and Cross-Referencing Design and Plant Applications at Allowance”.

    Added a paragraph stating that U.S. utility patents and U.S. utility patent application publications no longer receive classifications within the USPC and that only U.S. design and plant patents and U.S. plant patent application publications will continue to receive classification within the USPC.

    Removed language directed to classification of utility applications.

    903.07(a)

    Revised title and discussion to reflect that topics covered in the section relate to design and plant patent applications.

    903.08 et seq.

    Removed and reserved. The topics previously covered in 903.08 relating to assignment and transfer within Cooperative Patent Classification (CPC) and USPC were moved to new MPEP §§ 909.01et seq. and 909.02et seq., respectively.

    904

    Revised to state that “The examiner must also review the file wrapper history and prior art contained in certain related applications and proceedings”. Added reference to MPEP § 904.04.

    904.01(a)

    Revised to clarify that variant embodiments which are included in the breadth or scope of a claim but not disclosed in the application may anticipate or render obvious a claim and should be considered during search.

    904.02

    Revised to state that the examiners must conduct a thorough and complete search. Added definitions of thorough and complete search.

    Revised to state that a thorough and complete search will include the identification and review of the areas with the highest probability of including prior art and that the search should cover disclosed features related to the inventive concept of the claims.

    Revised to clarify that the search should cover the claimed subject matter and should also cover the disclosed features related to the inventive concept of the claims which might reasonably be expected to be claimed.

    904.02(a)

    Revised to state that every group/subgroup and secondary classification area of the Cooperative Patent Classification and class/subclass of the U.S. Patent Classification pertinent to the invention should be included in the field of search.

    Revised to state that a thorough and complete search requires the consideration of references from each of the areas where the examiner is likely to find pertinent prior art.

    904.02(c)

    Changed “ultimate responsibility” to “responsibility” in discussion concerning responsibility for formulating search strategies.

    904.03

    Changed “complete search” to “thorough and complete search”.

    904.04

    New section that discusses search of related post-grant proceedings.

    905.03(a)

    Added the definition of an application’s classification picture.

    Added a new subsection IV that discusses C* classification information.

    905.03(b)

    Added a new paragraph that discusses primary examiner review of the classification picture when an application is passed to issue.

    908

    Added and reserved.

    909

    New section titled “Routing and Docketing of Applications.”

    909.01

    New section that discusses assignment, transfer and classification challenges under CPC.

    909.01(a)

    New section that discusses handling of new utility applications in CPC.

    909.01(b)

    New section that discusses classification and assignment of utility applications to examiners.

    909.01(c)

    New section that discusses inspection of amendments necessitating C* classification challenges.

    909.01(d)

    New section that discusses the classification challenge procedure in CPC.

    909.02

    New section that discusses assignment and transfer of applications in USPC. Includes content moved from MPEP § 903.08 and revised to refer to current design and plant application processing.

    909.02(a)

    New section that discusses assignment of new design and plant patent applications. Includes content moved from MPEP § 903.08(a) and revised to refer to current design and plant application processing.

    909.02(b)

    New section that discusses classification and assignment of design and plant applications. Includes content moved from MPEP § 903.08(b) and revised to refer to current design and plant application processing.

    909.02(c)

    Added and reserved.

    909.02(d)

    New section that discusses transfer procedure for design and plant applications. Includes content moved from MPEP § 903.08(d) and revised to refer to current design and plant application processing.

    909.02(e)

    New section that discusses assignment of design and plant applications. Includes content moved from MPEP § 903.08(e) and revised to refer to current design and plant application processing.

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    CHAPTER 1000:

    1002

    Revised guidance to deciding officials on the acceptance of petitions filed under 37 CFR 1.181(f) filed more than 2 months from the date of the action or notice from which relief is requested.

    1002.02

    Revised to clarify guidance on petitions decided by Technology Center Directors, including language that may be used in petition decisions to promote consistency and clarity in such decisions.

    1002.02(b)

    Revised the section title to “Petitions and Requests Decided by the Deputy Commissioner Who Oversees the Office of Petitions or Assigned Staff in the Office of Petitions, the Office of Patent Legal Administration and the MPEP Staff Office”.

    1002.02(c)

    Revised to include petitions regarding sequence rules and request for a certificate of statement of availability of deposit as matters decided by the Technology Center Directors.

    1002.02(c)(1)

    Revised section title to “Petitions Decided by the Director of the Technology Center Who Oversees Licensing and Review”.

    Revised to replaces references to the “Director of Technology Center 3640” with “Director of the Technology Center Who Oversees Licensing and Review”.

    1002.02(c)(2)

    Removed and reserved.

    1002.02(k)

    Revised title to “Matters Decided by the General Counsel, the Office of General Law and the Solicitor”.

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    CHAPTER 1100:

    Passim

    Replaced “electronic filing system (EFS)” or “EFS” with “patent electronic filing system” and “EFS Web Legal Framework” with “Legal Framework for Patent Electronic System.”

    Replaced “Office Electronic Filing System (EFS) to “USPTO patent electronic filing system.”

    1120

    Updated the reproduction of 37 CFR 1.211.

    Deleted the reproduction of pre-AIA 37 CFR 1.211 and the paragraph at the end of the introduction.

    In subsection I, added 35 U.S.C. 386 to the list of benefit claims which may affect the application publication date.

    In subsection III, revised to incorporate guidance from ST.25 rulemaking and ST.26 rulemaking.

    In subsection IV, replaced “Office of Data Management – Patent Publication Branch” with “Application Assistance Unit.”

    1121

    Revised to incorporate guidance from ST.25 rulemaking and ST.26 rulemaking.

    In subsection IV, replaced the “Office of Data Management – Patent Publication Branch” with “Office.”

    1122

    In subsection I, revised the discussion of when a nonpublication request is appropriate.

    In subsection II, removed a reference to the “Office of Data Management – Patent Publication Branch” and replaced it with a suggestion to contact the Application Assistance Unit.

    1128

    In subsection II, replaced “on the USPTO website” with “through the Certified Copy Center storefront”.

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    CHAPTER 1200:

    1204

    In subsection II, revised to add a discussion regarding appellant’s waiver of a challenge to a rejection and the implications of such with respect to nonstatutory double patenting rejections.

    1204.01

    Revised to clarify that the fee discussion is related to appeal related fees.

    1204.02

    Revised to indicate that form PTO/AIA/33 is not included in the 5 page limit for filing a Pre-Appeal Brief Review Request.

    Revised to indicate that a Pre-Appeal Brief Review Request may not be filed with an after final amendment.

    Revised to add that an appellant may not request withdrawal of an appeal once a properly filed notice of appeal has been filed and must perfect the appeal by timely filing an appeal brief under 37 CFR 41.31.

    1205.02

    Revised to add discussion regarding appellant’s request to hold a rejection in abeyance and appellant’s waiver of a challenge to a rejection and the implications of such with respect to non-statutory double patenting rejections.

    1207.02

    Revised to indicate that the mailing of an examiners answer begins the time period for payment of the appeal forwarding fee unless a petition under 37 CFR 1.181 to designate a new ground of rejection in the examiner’s answer has been filed.

    Revised to add reference to and instructions for new form paragraph 12.278.

    Added new form paragraph 12.278.

    1208.01

    Revised to add a new paragraph discussing the appeal forwarding fee, including a clarification that a general authorization to pay fees cannot be accepted for the payment of the appeal forwarding fee.

    1209

    Revised reproduction of form paragraph 12.279.03.

    1214

    Replace “PALM status code” with “application status”. Revised to reflect that there are different time periods after a Board decision under 37 CFR 90.3 and 37 CFR 41.52.

    1214.01

    Revised to add information regarding filing an RCE after a Board decision which includes a new ground of rejection.

    1214.06

    Added clarifying language that the guidance in this section pertains to situations where the examiner is sustained in whole or in part.

    In subsection II, revised to clarify instructions for responding to an examiner’s requirement for rewriting dependent claim(s) after a Board decision in which claims stand allowed.

    Updated form paragraph 12.292 to reflect the above-mentioned clarified guidance.

    1216.01

    In subsection I.A, revised to add that applicants wanting to continue prosecution in applications where all claims are rejected and after a decision by the U.S. Court of Appeals for the Federal Circuit must file a continuation application prior to the court mandate, as the RCE procedure in 37 CFR 1.114 is not available.

    1216.02

    Revised to remove statement that a plaintiff is precluded from presenting new issues in an action under 35 U.S.C. 145.

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    CHAPTER 1300:

    1302

    Added the title “Preparation of an Application for Allowance”.

    1302.04

    Added a statement that the examiner should determine if an extension of time is required for the entry of an examiner's amendment and a cross reference to MPEP § 706.07(f).

    Deleted “and signed” from discussion of submitting a form PTO-2038.

    1302.08

    Updated the process for performing an interference search of applications held under Secrecy Order.

    Changed the reference to TC work group 3640 to Licensing and Review.

    1305

    Added 35 U.S.C. 156 to the list of statutes providing a basis for post-grant action by the USPTO.

    1308

    In subsection II.B, updated the process for withdrawal from issue, at the initiative of the Office, after payment of the issue fee.

    1309

    In subsection III, updated the explanation of how assignee information is identified for printing on an issued patent as opposed to affecting a change in the applicant of record.

    1309.02

    Revised to clarify the procedure for handling a “Printer Rush” by, for example, adding a reference to a Response to Rule 312 Communication.

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    CHAPTER 1400:

    1400.01

    Added a new paragraph to state that no new petitions for covered business method reviews can be filed on or after September 16, 2020.

    1410

    Revised “sequence listings” to “‘Sequence Listings’”.

    1410.01

    In subsection I, added text to make it clear that the reissue oath or declaration must be signed by a party authorized to act on behalf of the assignee of the entire interest and a cross reference to MPEP § 325, subsection V.

    In subsection II, added text to make it clear that the reissue oath or declaration must be signed by a party authorized to act on behalf of the assignee of the entire interest and a cross reference to MPEP § 324, subsection V.

    1410.02

    In subsection I, deleted the reference to discontinued form PTO/SB/50 and revised the patent number to “99,999,999” in the example consent so that it refers to a hypothetical patent number.

    1412.01

    Added a new subsection “I. ORIGINAL PATENT REQUIREMENT” heading and renumbered the existing subsection headings as a conforming change.

    In new subsection I, revised text to clarify that the determination of the original patent requirement is a factual inquiry; revised the quotation from Antares Pharma Inc., v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014); added citations to and discussion of Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 2019 USPQ2d 221227 (Fed. Cir. 2019) and Ex parte Sandwick, Appeal No. 2018-008369 (PTAB July 23, 2019).

    In renumbered subsection II, added a citation to and discussion of Ex parte Sandwick, Appeal No. 2018-008369 (PTAB July 23, 2019).

    In renumbered subsection III, added citations to and discussion of In re General Electric Co., 789 F. App’x 857, 861 (Fed. Cir. 2019) and Ex parte Yeo, Appeal No. 2020-001116 (PTAB March 2, 2020). Moved text regarding that a recapture analysis does not need to be continued for claims drawn to overlooked aspects and clarified that examiners should state which claims are drawn to overlooked aspects “in a rejection” on the record. Added text to the illustrating example to make it clear that the disclosed embodiment that was not previously claimed and the original application was not subject to any restriction requirement during in the original prosecution of the patent. Updated the cross reference from to subsection I to subsection II as a conforming change.

    1412.02

    Updated the cross references from MPEP § 1412.01, subsection II to subsection III as a conforming change.

    In subsection II.C, added a citation to and discussion of In re General Electric Co., 789 F. App’x 857 (Fed. Cir. 2019).

    1414

    In subsection II, added text in item (B) to clarify that examiners should not object to the reissue oath/declaration if more than one error is stated. Clarified that the “at least one error” is pursuant to 35 U.S.C. 251 and that the oath or declaration must specifically identify the claim and the error, required by 37 CFR 1.175(a), to support a broadening reissue. Deleted the citation to In re Constant, 827 F.2d 728, 3 USPQ2d 1479 (Fed. Cir. 1987) in item (C). Reorganized and clarified text in item (D)(1) regarding identifying a new error or filing a statement explaining compliance with 37 CFR 1.175(f)(2) in continuation reissue applications.

    1415

    In subsection II, updated text to reflect changes to the regulations.

    1415.01

    Updated text to provide updated instructions regarding how to obtain maintenance fee histories.

    1443

    Updated text to reflect changes in USPTO IT systems.

    1451

    In the preamble text before subsection I, added “hypothetical” prior to “examples” and revised the patent numbers and application numbers in the examples so that they refer to hypothetical patent and application numbers.

    In subsection I, revised the patent numbers and application numbers in the example “Notice” so that they refer to hypothetical patent and application numbers.

    1453

    In the preamble text before subsection I, updated the reproduction of 37 CFR 1.173. Revised text to explain the revised requirements of 37 CFR 1.173(d) and to state that the exception for examiner’s amendments set forth in 37 CFR 1.121(g) does not apply in reissue applications.

    In subsection I, revised text to explain the revised requirements of 37 CFR 1.173(b)(1).

    1455

    In subsection VIII, revised text to state that the exception for examiner’s amendments set forth in 37 CFR 1.121(g) does not apply in reissue applications.

    1480

    In the preamble before subsection I, added “A request for a certificate of correction filed via the patent electronic filing system should use the document description: Request for Certificate of Correction.”

    In subsection I, added text to state that if the Office chooses to issue a certificate of correction based on third-party information, the Office will mail a notice of intent to the patentee. Revised text regarding third-party information not being retained by the Office by changing “nor” to “and it will not”. Added a new paragraph that states a third-party request for a certificate of correction should be clearly labeled as such and must not be filed using the patent electronic filing system.

    1480.01

    Added “A request for expedited issuance of a certificate of correction filed via the patent electronic filing system should use the document description: Request for Certificate of Correction.”

    1481

    Added paragraphs that further explain what is considered a clerical or typographical mistake for which a certificate of correction may be issued. The added paragraphs include citations to and discussion of In re Arnott, 19 USPQ2d 1049 (Comm’r Pat. 1991); Superior Fireplace Co. v. The Majestic Products Co., 270 F.3d 1358, 60 USPQ2d 1668 (Fed. Cir. 2001); and In re Patent No 6550701, 2006 WL 4494426 (Comm’r Pat. 2006).

    1481.01

    In the preamble before new subsection I, added text to explain that providing assignee information on the form PTOL-85B will result in that information being printed on the patent but will not change the applicant information of record. The added text further explains that a request under 37 CFR 1.46(c) must be filed before or with payment of the issue fee to change the applicant's information.

    Added a new subsection heading “I. AFTER PAYMENT OF ISSUE FEE OR ISSUANCE OF A PATENT”. In new subsection I, added a paragraph to state that a request to add or change assignee information that is not compliant with 37 CFR 3.81(b) will not be granted and that mistakenly adding assignee information on the form PTOL-85B is not an error correctable by a certificate of correction.

    1481.02

    In the preamble before subsection I, added text discussing the effect of the amendment to 35 U.S.C. 256 that removed the “without deceptive intention” language and a citation to and discussion of Egenera, Inc. v Cisco Sys., Inc., 972 F.3d 1367, 2020 USPQ2d 10997 (Fed. Cir. 2020). Clarified text regarding inventor name changes to make it clear that the policies also apply to legal name changes. In addition, added text to state when an inventor name change cannot be made by a certificate of correction and that all requests to correct a named inventor should use the form PTO/SB/44.

    In subsection I, amended text to state that a copy of the court order and a certificate of correction under 37 CFR 1.323 “must” be submitted to the Certificates of Correction Branch and to recommend use of form PTO/SB/44.

    In subsection III, revised note 2 in form paragraph 10.18 to state that the application must be forwarded to a petitions attorney in the “Office of Petitions”.

    1481.03

    In subsection II.A, added cross references to MPEP § 211.04 for information on petitions to accept an unintentionally delayed claim and text to further explain when a petition under 37 CFR 1.78 would not be granted, including adding several examples of when the petition would not be granted. Added new items (C) and (D) to exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate. In addition, added text to state that a certificate of correction cannot be used to remove a benefit claim.

    1485

    In the preamble before subsection I, added “A request for a certificate of correction filed via the patent electronic filing system should use the document description: Request for Certificate of Correction.” Also added that in addition to the Certificate of Correction form, the request must include a signed request which should identify support in the application for any Office errors in the patent. Added that if the request is not signed, it will not be accepted by the Office. Revised the patent number and application number in the example certificate of correction so that they refer to hypothetical patent and application numbers.

    1490

    In subsection III.A, added “and must be filed in the reexamination proceeding in which the rejection was made” after “37 CFR 1.321(a)(1)” in the second paragraph.

    In subsection III.B, added “and must be filed in the application in which the rejection was made” after “37 CFR 1.321(b)(1)” in the second paragraph.

    In subsection V.A, added “unless the face of the patent already includes the language that the patent is subject to a terminal disclaimer” at the end of the sentence starting with “Any eTD submitted after the date of payment of the issue fee ….”

    In subsection VI.A, changed “to which the disclaimer is directed” to “that is the basis of the nonstatutory double patenting” at the end of the first sentence. Added a sentence regarding that for terminal disclaimers common ownership must be at the time of enforcement and a cross reference to MPEP § 804.03 at the end of the third paragraph. Added “unless the face of the patent already includes the language that the patent in subject to a terminal disclaimer” at the end of the sentence starting with “Any terminal disclaimer submitted after the date of payment of the issue fee ….”

    In subsection VI.D, revised text to define patent term filing date and how this filing date is used to determine when to withdraw or maintain provisional double patenting rejections in different situations.

    In subsection VI.D.2(b) and (c), revised text to clarify that a compliant terminal disclaimer must be filed with a reply to obviate a nonstatutory double patenting rejection. The revisions are conforming changes to MPEP § 804, subsection I.B.

    In subsection VII, revised form paragraphs 14.24, 14.25, 14.26.07, 14.35, 14.35.01, 14.36, and 14.36.01 to make it clear that a previously submitted disclaimer fee will be applied when a replacement or supplemental terminal disclaimer is filed. Revised form paragraphs 14.27.07.fti, 14.27.07.1, and 14.27.08 to remove the provision that “any patent granted on the reference application” or “the reference patent” shall be enforceable only for and during such time that it is not separately enforced from the instant patent or any patent granted on the instant application. Revised form paragraphs 14.37 and 14.38 to clarify that a compliant terminal disclaimer must be filed with a reply to obviate a nonstatutory double patenting rejection.

    In subsection VIII.B, added text to clarify that if the terminal disclaimer erred in naming the patent owner(s) or applicant, the patent owner may file a paper explaining the error and requesting it be made of record and could also file an additional terminal disclaimer naming the correct owner(s) or applicant(s).

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    CHAPTER 1500:

    1502

    Added quotations from and citations to In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021) and Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334 (Fed. Cir. 2019).

    1502.01

    In item (A), replaced “the earliest effective U.S. filing date” with “the date on which the earliest such application was filed” to more accurately reflect the language of 35 U.S.C. 154.

    1503.01

    In subsection I, added a quotation from and citation to Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334 (Fed. Cir. 2019) in the second paragraph. Additionally, revised form paragraphs 15.05.01 and 15.59.

    In subsection II, revised form paragraphs 15.60 and 15.61.

    1503.02

    In subsection I, updated the discussion of views to explain when a single, two-dimensional, plan-view may be sufficient, including a discussion of In re Maatita, 900 F.3d 1369 (Fed. Cir. 2018).

    1504

    Revised form paragraph 15.72.

    1504.02

    Added a citation to and discussion of In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021). Additionally, added a citation to In re Zonenstein, 172 F.2d 599 (CCPA 1949) and deleted the citation to In re Glavas, 230 F.2d 447 (CCPA 1956).

    Revised form paragraphs 15.15.01.fti, 15.15.02.aia, 15.15.02.fti, 15.15.03.fti, 15.15.04.aia, and 15.15.04.fti.

    1504.03

    In subsection III, revised form paragraphs 15.19.02.aia, 15.19.03.aia, 15.19.03.fti, 15.19.04.fti, 15.19.05.aia, 15.19.05.fti, 15.19.06.fti, 15.19.07.fti, and 15.70.aia.

    1504.04

    In subsection I.A, added a discussion of In re Maatita, 900 F.3d 1369 (Fed. Cir. 2018).

    1504.06

    Updated the cross references to subsections in MPEP § 804 as a conforming change.

    Revised form paragraph 15.24.06.

    1512

    In subsection IV.C, replaced “derogatory use of a trademark” with “use of a trademark in a derogatory manner.”

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    CHAPTER 1700:

    1702

    Revised to update reproduction of 37 CFR 11.10 and added guidance related to the rule change.

    1704

    Revised to reflect guidance regarding current USPTO IT systems.

    1705

    Revised to reflect guidance regarding current USPTO IT systems.

    1730

    Replaced USPTO Office of Public Records with Patent and Trademark Copy Fulfillment Branch of the Public Records Division.

    In subsection IV, added the contact information for the Application Assistance Unit.

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    CHAPTER 1800:

    Introduction

    Replaced “International Application Processing Division” with “Office of PCT Operations” in the third paragraph.

    1801

    In subsection V, added a reference to PCT Rule 78.1 for amending an application by right when entering the national stage following Chapter II. Also added references to PCT Article 41 and PCT Rule 78 that define the time limit for amending applications by right.

    1803

    Divided the last paragraph into two paragraphs and deleted text discussing PCT Rule 49ter .

    1809

    Revised the title to “Private PAIR Access.”

    1812

    Deleted the reference to PCT-SAFE software in the last sentence.

    1810

    Updated the reproduction of 37 CFR 1.431.

    1821

    Replaced “Image File Wrapper (IFW)” with “electronic file” in the second paragraph.

    Deleted text that described filing a request via PCT-SAFE or uploading a zip file to EFS-Web and updated text to describe using the ePCT software or the form PCT/RO/101 to file the request.

    Added text that WIPO no longer supports the PCT-SAFE software and that applicants should be mindful of certain foreign filing restrictions with a cross reference to MPEP § 1832.

    In the third paragraph, added a description of WIPO’s ePCT system and deleted the discussion of using ePCT to generate a PCT Request for filing as part of an international application with the RO/US.

    In subsection I, updated the example dates from “2004” to “2020.”

    1823

    Updated the reproduction of PCT Administrative Instruction 204.

    Revised the list of headings for parts of the description and added a new paragraph discussing additional headings used in applications filed before July 1, 2022.

    1823.02

    Revised the title to “Filing Nucleotide and/or Amino Acid Sequence Listings in International Applications.”

    Added an Editor Note clarifying that the reproduced PCT Rules and Administrative Instructions are applicable to applications having an international filing date on or after July 1, 2022 and providing a reference to the previous version of the rules and instructions.

    Updated the reproduction of PCT Rule 5.2, PCT Rule 13ter , and PCT Administrative Instruction 208.

    In subsection I, revised to incorporate guidance from ST.26 rulemaking.

    In subsection II, revised to clarify guidance for international applications having an international filing date before July 1, 2022, disclosing one or more nucleotide and/or amino acid sequences (WIPO ST.25).

    Deleted subsection III because tables related to sequence listings are no longer allowed in PCT international applications.

    1827.01

    Updated the circumstances when the international and search fees will be refunded.

    1828.01

    In the second paragraph, replaced “has indicated that it intends to decide” with “decides” to clarify the standards used by the International Bureau when deciding requests for restoration of the right of priority.

    1828.02

    Added a new paragraph setting forth the process for correcting or adding an indication referred to in PCT Rule 4.11.

    1832

    Added a new paragraph regarding foreign filing restrictions due to the revisions to 37 CFR 5.11.

    1834.02

    Revised to clarify when delays in meeting time limits fixed in the PCT regulations may be excused or the time limits may be extended.

    1840

    Added Saint Kitts and Nevis to the list of countries for which the USPTO agreed to conduct international searches and prepare international search reports and written opinions.

    1843.02

    In the discussion of PCT Administrative Instruction 513(c), replaced “in accordance with the prescribed standard or in a computer readable form” with “in the required form, language and manner.”

    1843.03

    In the discussion of PCT Administrative Instruction 513(c), replaced “in accordance with the prescribed standard or in a computer readable form” with “in the required form, language and manner.”

    1844.01

    Added an Editor Note providing information on the prior version of PCT/ISA/210.

    Updated the sample International Search Report (PCT/ISA/210) and associated discussion.

    1845.01

    Added an Editor Note providing information on the prior version of PCT/ISA/237.

    Updated the sample written opinion of the International Searching Authority (Form PCT/ISA/237) and associated discussion.

    1848

    Added an Editor Note clarifying that the reproduced PCT Rules and Administrative Instructions are applicable to applications having an international filing date on or after July 1, 2022 and providing a reference to the previous version of the rules and instructions.

    Updated the reproduction of PCT Rule 13ter and PCT Administrative Instruction 513.

    In subsection I, revised to incorporate guidance from incorporate guidance from the ST.26 rulemaking.

    In subsection II, revised to clarify guidance for international applications having an international filing date before July 1, 2022, disclosing one or more nucleotide and/or amino acid sequences (WIPO ST.25).

    1850

    In subsection X, clarified that no protest fee under PCT Rule 40.2(e) is due in the ISA/US.

    1857

    In subsection I, deleted the statement that sequence listings may be filed in ASCII text format.

    1865

    Added Saint Kitts and Nevis to the list of countries where the IPEA/US will serve as International Preliminary Examining Authority for residents or nationals thereof.

    1871

    Updated the procedure for making amendments to the claims under PCT Rule 66.8 and the guidelines for processing amendments filed under Articles 19 and 34 of the PCT.

    1875.02

    Added a statement that “The IPEA/US does not charge a protest fee under PCT Rule 68.3(e).” in the paragraph prior to subsection I.

    1877

    Clarified that the IPEA may invite the applicant to furnish a sequence listing and pay a late furnishing fee when an application contains disclosure of one or more nucleotide and/or amino acid sequences required to be included in a sequence listing.

    1878

    Added “CPC” to the classifications that should be given on Form PCT/IPEA/408.

    In subsection IV, updated the instructions for completing subsection 1 of Box IV of Form PCT/IPEA/408.

    1878.01

    Added section title “Includes Subsections Regarding Prior Art, Novelty, Inventive Step, and Industrial Applicability for Purposes of the Written Opinion and the International Preliminary Examination Report.”

    1879

    Added an Editor Note providing information on the prior version of PCT/IPEA/409.

    Updated the discussion of Form PCT/IPEA/409.

    1879.02

    Updated the reproduction of PCT Rule 71.1.

    1893.01(a)

    Added a statement setting forth the time period for amendments by right when entering the U.S. national stage following either Chapter I or Chapter II.

    1893.01(a)(1)

    Updated the reproduction of 37 CFR 1.495.

    Added “including for early entry and RCE filing” to the statement regarding further information regarding the oath or declaration under 35 U.S.C. 371(c)(4) and 37 CFR 1.497.

    1893.01(a)(3)

    Updated the example regarding entry of English translation of annexes in the third paragraph.

    1893.01(b)

    Updated the reproduction of 37 CFR 1.46.

    1893.01(c)

    Updated the explanation of how the application size fee for a national stage application is calculated.

    1893.01(d)

    Updated the discussion of when an English translation of a sequence listing is required.

    1893.01(e)

    In subsection I, added a statement that any required inventor’s oaths or declarations must be filed prior to or with a request for continued examination.

    1893.02

    Replaced “Legal Framework for EFS-Web” with “Legal Framework for Patent Electronic System”.

    1893.03(a)

    Replaced “Notification of Acceptance of Application Under” with “NOTICE OF ACCEPTANCE OF APPLICATION UNDER” and added “& foreign” after “Continuity” in the third paragraph.

    1893.03(b)

    Replaced two instances of “NOTIFICATION” with “NOTICE” to reflect the correct name of Form PCT/DO/EO/903.

    1893.03(d)

    Revised form paragraphs 18.21 and 18.22.

    1893.03(e)

    In subsection II, replaced “NOTIFICATION” with “NOTICE” to reflect the correct name of Form PCT/DO/EO/903.

    1893.03(f)

    Reworded the first paragraph for clarity and added a new paragraph regarding the filing of amended drawings.

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    CHAPTER 2000:

    2000

    Changed title from “Reserved” to “Duty of Disclosure”.

    2000.01

    Added discussion of Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board, 87 FR 45764 (July 29, 2022).

    2001.01

    Updated guidance based on Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board, 87 FR 45764 (July 29, 2022).

    2001.04

    Updated guidance based on Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board, 87 FR 45764 (July 29, 2022).

    2001.05

    Updated guidance based on Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board, 87 FR 45764 (July 29, 2022).

    2001.06

    Added that the duty to disclose material information covers all periods “before the application is granted.”

    Added that sources of material information include supporting information related to regulatory review with a citation to MPEP § 2001.06(e).

    2001.06(e)

    Added this new section which discusses the duty of disclosure with regards to documentation submitted to a regulatory review body, including a citation to Belcher Pharms., LLC v. Hospira, Inc., 11 F.4th 1345 (Fed. Cir. 2021).

    2002.02

    Revised to clarify that the presentation to the Office (whether by signing, filing, or submitting) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification which calls for a duty of reasonable inquiry to ensure that the paper is not being presented for any improper purpose, the legal contentions are warranted by law, the allegations and other factual contentions have evidentiary support, and the denials of factual contentions are warranted on the evidence.

    2003

    Revised to emphasize that any material information should be submitted to the Office as early as possible in any prosecution or proceeding before the Office.

    2003.01

    Updated guidance based on Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board, 87 FR 45764 (July 29, 2022).

    2004

    Added a citation in suggestion 1 to GS Cleantech Corp. v. Adkins Energy LLC, 951 F.3d 1310, 2020 USPQ2d 10092 (Fed. Cir. 2020).

    Item 8 was revised to emphasize that misrepresentations can also occur in declarations submitted to the Office and to add a paragraph regarding applicants taking care to ensure that actual results and predicted results can be readily distinguished when drafting a patent application with a citation to Properly Presenting Prophetic and Working Examples in a Patent Application, 86 Fed. Reg. 35074, 5 (July 1, 2021).

    In item 11, replaced “[i]t may be desirable to submit information” with “[i]t is desirable to submit material information” and added a citation to GS Cleantech Corp. v. Adkins Energy LLC, 951 F.3d 1310, 2020 USPQ2d 10092 (Fed. Cir. 2020).

    Added item 19 which discusses that documentation submitted to a regulatory review body may be relevant to an ongoing patent prosecution with a citation to Belcher Pharms., LLC v. Hospira, Inc., 11 F.4th 1345 (Fed. Cir. 2021).

    2005

    Updated guidance based on Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board, 87 FR 45764 (July 29, 2022).

    Revised to update citation to Star Fruits S.N.C. v. United States, 61393 F.3d 1277, 73 USPQ2d 1409 (Fed. Cir. 2005).

    2011

    Revised to emphasize that applicants should disclose to the USPTO any information that refutes, or is inconsistent with, a position the applicant takes in: (i) opposing an argument of unpatentability relied on by the Office, or (ii) asserting an argument of patentability.

    2015

    Added a new section titled “Duties of Disclosure and Reasonable Inquiry Arise in Dealings With Other Government Agencies”, which includes guidance based on Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board, 87 FR 45764 (July 29, 2022).

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    CHAPTER 2100:

    Passim

    Revised to reflect the AIA definitions of applicant and inventor.

    2104.01

    Changed the reference to TC work group 3640 to Licensing and Review.

    2106.03

    In subsection I, corrected the citation for Samsung Electronics Co. v. Apple Inc.

    2106.04(a)

    Corrected the citation to Thales Visionix, Inc. v. United States.

    2106.04(a)(2)

    In subsection I, corrected the citations to Alice Corp. Pty. Ltd. v. CLS Bank Int’l and Bilski v. Kappos.

    In subsection II.A, corrected the citation to Intellectual Ventures I LLC v. Symantec Corp.

    In subsection II.C, corrected the citation to BSG Tech. LLC v. Buyseasons, Inc.

    In subsection III, corrected the citation to Mayo Collaborative Servs. v. Prometheus Labs. Inc.

    In subsection III.A, corrected the citation to TQP Development, LLC v. Intuit Inc.

    In subsection III.D, corrected the citation to Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.

    2106.04(d)(2)

    Changed the cross reference from MPEP § 2106.05(g) to MPEP § 2106.05(h).

    2106.05(a)

    Corrected the citation to Intellectual Ventures I LLC v. Symantec Corp.

    2106.05(b)

    In subsection I, added the USPQ cite to citations to In re Alappat and In re Bilski.

    2106.05(c)

    Added the USPQ cite to the citation to In re Warmerdam.

    2106.05(d)

    In subsection I, corrected the citation to Intellectual Ventures v. Symantec in item 2.

    2106.07(a)

    In subsection I, corrected the cross reference from MPEP § 2106.04, subsection (IV) to MPEP § 2106.04(a)(3).

    2109

    Added new subsection VII for guidance that an inventor or joint inventor must be a natural person.

    2109.01

    Added a citation to and discussion of Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., 964 F.3d 1365, 2020 USPQ2d 10775 (Fed. Cir. 2020).

    2111.01

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    In subsection I, changed “time of the invention” to “relevant time”.

    In subsection III, added a citation to Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 2021 USPQ2d 848 (Fed. Cir. 2021).

    In subsection IV.A, changed “time of filing” to “relevant time”.

    In subsection IV.B., added a citation to In re Clarke, 809 Fed. Appx. 787, 2020 USPQ2d 10253 (Fed. Cir. 2020).

    2111.02

    In subsection II, added a citation to Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020).

    2111.05

    Clarified text by changing “claim limitations comprised of printed matter” to “claim limitations that include printed matter” in the first paragraph.

    2112

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    In subsection II, changed “time of the invention” to “relevant time”.

    In subsection IV, added a citation to and discussion of PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 112 USPQ2d 1945 (Fed. Cir. 2014) and Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 2019 USPQ2d 494084 (Fed. Cir. 2019) and a citation to Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 2020 USPQ2d 6227 (Fed. Cir. 2020).

    In subsection V, changed “Board of Patent Appeals and Interferences” to “Board”.

    2113

    In subsection I, corrected the citation to Amgen Inc. v. F. Hoffmann-La Roche Ltd.

    2116

    Adding a section heading “Novel, Nonobvious Starting Material or End Product”.

    2117

    Added a USPQ cite for the several citations.

    In subsection IV.D, revised the subsection heading to “Based On PCT International Search and Preliminary Examination Guidelines Example 33”.

    2121.02

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    In subsection I, changed “time of the invention” to “relevant time”.

    In subsection II, changed “date of invention” to “relevant time”.

    2123

    In subsection I, corrected the citation to Merck & Co. v. Biocraft Labs., Inc.

    2124

    Clarified that the relevant time for undue experimentation to enable the full scope of the claims is before the effective filing date in the discussion of Amgen Inc. v. Sanofi, 872 F.3d 1367, 124 USPQ2d 1354, 1359 (Fed. Cir. 2017). Corrected the citation to Ex parte Erlich.

    2124.01

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    In subsection I, changed “time of the invention or application for patent” to “relevant time”.

    2128

    In subsection II.E, added a citation to Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 2021 USPQ2d 867 (Fed. Cir. 2021).

    In subsection III, added USPQ cite to the citation to Constant v. Advanced Micro-Devices, Inc.

    2128.01

    In subsection I, added a citation to and discussion of Telefonaktiebolaget LM Ericsson v. TCL Corp., 941 F.3d 1341, 2019 USPQ2d 428076 (Fed. Cir. 2019).

    In subsection II, added a citation to M & K Holdings, Inc. v. Samsung Elecs. Co., 985 F.3d 1376, 2021 USPQ2d 123 (Fed. Cir. 2021).

    2131.02

    In subsection III, clarified the discussion regarding Kennametal, Inc. v. Ingersoll Cutting Tool Co. and added a citation to and discussion about Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 122 USPQ2d 1116 (Fed. Cir. 2017).

    2133

    In subsection I, clarified when the 1-year grace period is extended under 35 U.S.C. 21(b) notwithstanding the provisions of 37 CFR 1.10 and the Office electronic filing system that allow for filings during weekends or holidays.

    2133.03

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    Added a citation to and discussion of Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d 1189 (2019) and a cross reference to MPEP § 2152.02(d).

    2133.03(a)

    Revised the Editor Note to state that the guidance in this section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

    2133.03(b)

    Revised the Editor Note to state that the guidance in this section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA and that AIA 35 U.S.C. 102(a)(1) uses the same “on sale” term as pre-AIA 35 U.S.C. 102(b).

    Clarified that the statutory or on sale bar is under pre-AIA 35 U.S.C. 102(b) and that references to § 102(b) are to pre-AIA § 102(b).

    In subsection III.A, added a citation to and discussion of Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d 1189 (2019).

    In subsection IV.A, clarified guidance when a sale or offer for sale may be applied as prior art and may prevent applicant from obtaining a patent.

    2133.03(c)

    Revised the Editor Note to state that the guidance in this section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

    2133.03(e) et seq.

    Revised the Editor Note to state that the guidance in this section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

    Revised the text so that it is applicable to both AIA35 U.S.C. 102 and pre-AIA 35 U.S.C. 102.

    2133.03(e)(1)

    In subsection I, added a citation to and discussion of Sunoco Partners Mktg. & Terminals LP v. U.S. Venture, Inc., 32 F.4th 1161, 2022 USPQ2d 417 (Fed. Cir. 2022).

    2133.03(e)(2)

    Added a citation to and discussion of Sunoco Partners Mktg. & Terminals LP v. U.S. Venture, Inc., 32 F.4th 1161, 2022 USPQ2d 417 (Fed. Cir. 2022).

    2136.05(b)

    Added an Editor Note that guidance in this section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

    In subsection I, clarified the discussion of In re DeBaun that Declarant’s exhibits and statement that he conceived the invention was enough to show the subject matter was declarant’s own invention.

    2138

    Added “foreign” before “priority” in the last sentence.

    2138.06

    In subsection III, clarified the discussion of Huelster v. Reiter in the parenthetical.

    2139.02

    In subsection I, clarified when the 1-year grace period is extended under 35 U.S.C. 21(b) notwithstanding the provisions of 37 CFR 1.10 and the Office electronic filing system that allow for filings during weekends or holidays.

    2139.03

    Revised form paragraphs 7.06, 7.15.01.fti, 7.15.02.fti, and 7.15.03.fti.

    2141

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    In subsection II, changed “time of invention” to “relevant time”. Clarified that each application must be analyzed for obviousness and decided on its own facts and the factual inquiries as well as secondary considerations when present.

    In subsection II.C, corrected the cross reference from MPEP § 2141 to MPEP § 2141.03.

    2141.01

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    In subsection I, rewrote the third paragraph to clarify the prior art basis for disclosures applied in an obviousness rejection and to align the guidance to statutory text.

    In subsection III, revised “the time the invention was made” to “the relevant time” in the heading and added a sentence that the requirement of “before the effective filing date of the claimed invention” also serves to avoid impermissible hindsight.

    In subsection IV, revised the heading to clarify the subsection pertain to the required conditions for common ownership under pre-AIA 35 U.S.C. 103(c). Deleted the citation to Ex parte Yoshino.

    2141.01(a)

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    In subsection I, revised text to clarify that the “same field of endeavor” and “reasonably pertinent” are two separate tests for establishing analogous art. Added citations to In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997). Added a citation to and discussion of Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 2019 USPQ2d 430083 (Fed. Cir. 2019) and Donner Technology, LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 2020 USPQ2d 11335 (Fed. Cir. 2020).

    2141.02

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    2141.03

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    In subsection I, changed “time of the invention” to “relevant time”. Added a paragraph that discusses that the level of disclosure in the application under examination or in the relevant references may be informative of the knowledge and skills of a person of ordinary skill in the art, including a citation to and discussion of Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 2020 USPQ2d 10476 (Fed. Cir. 2020). Changed “widely disseminated” to “accessible to the public” and corrected two pinpoint citations in the fifth paragraph.

    2142

    Added an Editor Note that many of the court decisions discussed in this section involve pre-AIA 35 U.S.C. 102 and may be applicable to AIA 35 U.S.C. 102 but the relevant time is different.

    Clarified that the examiner bears the initial burden using facts and reasoning to establish obviousness and that the applicant is under no obligation to submit evidence or arguments to show nonobviousness if the examiner does not produce a prima facie case. In addition, added that the relevant time for analyzing obviousness under AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103.

    2143

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    Changed “time of the invention” to “relevant time”.

    In subsection I, revised the heading to “Examples of Rationales”.

    In subsection I.A, added a citation to B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 2020 USPQ2d 10706 (Fed. Cir. 2020) and made minor corrections in Examples 1-3.

    In subsection I.E., added citations to KSR in the third paragraph of Example 3. Added a citation to and discussion of B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 2020 USPQ2d 10706 (Fed. Cir. 2020) in Example 9.

    2143.01

    Added an Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    2143.02

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    In subsections I and II, added a citation to and discussion of OSI Pharm., LLC v. Apotex Inc., 939 F.3d 1375, 2019 USPQ2d 379681 (Fed. Cir. 2019).

    In subsection III, revised the heading by changing “Time the Invention was Made” to “Relevant Time”. Added text to clarify that the first sentence is applicable for pre-AIA obviousness analysis and a new last sentence regarding obviousness analysis under the AIA.

    2143.03

    Added a USPQ cite for the citation to Fresenius USA, Inc. v. Baxter Int’l, Inc.

    2144.03

    In subsection A, changed “Determine” to “Determining” in the heading. Reorganized the order of a few sentences to improve flow in the first paragraph. Added a citation to Ahlert in the second paragraph.

    In subsection B, added “allow the applicant an opportunity to” in the last sentence.

    In subsection C, added a sentence that a mere request by the applicant to provide documentary evidence is not a proper traversal. Deleted a citation to Zurko and added a citation to Ahlert.

    2144.04

    Revised the first paragraph to clarify when and how examiners may use legal precedent as supporting rationale in rejections.

    2144.05

    Added USPQ cites to a number of citations.

    In subsection I, added a cross reference to subsection III.D of this section for additional guidance on disclosures of a broad range.

    In subsection III.C, added text regarding KSR and a cross reference to subsection II.B of this section for additional information on considering result-effective variables.

    2144.08

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    In subsection II, changed “Time the Invention was Made” to “Relevant Time” in the heading.

    In subsection II.A.3, added a cross reference to MPEP § 2141.03, subsection II.

    In subsection II.A.4(a), added text that discusses even where the genus contains a small number of members, the disclosed genus may not possess a recognizable class of compounds with common properties.

    In subsection II.A.4(c), corrected the citation to In re Deuel and added the publisher information to the citation to Molecular Cell Biology 51.

    2144.09

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    2145

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    Clarified the parenthetical description regarding In re Mayne.

    Added a citation to Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 2019 USPQ2d 483355 (Fed. Cir. 2019) and a cross reference to MPEP § 716.01(b).

    Clarified the discussion of Dillon by adding “alone” after “new use.”

    Revised text to make it clear that Office personnel should weigh all relevant evidence of record in obviousness determinations.

    Deleted a paragraph that discusses the KSR changes because these changes are now well-established in the guidance.

    In subsection X.A, added a citation to and discussion of Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 2020 USPQ2d 10476 (Fed. Cir. 2020).

    In subsection X.D.1, corrected the pinpoint in the citation to In re Gurley.

    2146 et seq.

    Revised text to make guidance align with pre-AIA 35 U.S.C. 103, such as changing “exclusions” to “disqualifications”.

    2146.02

    In subsection I, in example 7, changed “project” to “agreement” or deleted “project” to align the example text with statutory language.

    In subsection III, corrected the citation of 37 CFR 1.104(c)(5).

    2146.03(a)

    Revised text to make guidance align with pre-AIA 35 U.S.C. 103, such as changing “excluded” to “disqualified” and adding the reference to paragraph (a) of pre-AIA 35 U.S.C. 103, where appropriate, and align with pre-AIA 35 U.S.C. 102(e) by referring to an earlier pre-AIA 35 U.S.C. 102(e) date.

    Revised text to clarify the guidance when copending applications are combined into a single application and then receive a restriction requirement.

    2148

    Revised form paragraphs 7.06, 7.21.01.fti and 7.21.02.fti.

    2151

    Added a definition for inventor-originated disclosure, which is a disclosure by an inventor or joint inventor, or another who obtained directly or indirectly from the inventor or a joint inventor.

    Clarified when the 1-year grace period is extended under 35 U.S.C. 21(b) notwithstanding the provisions of 37 CFR 1.10 and the Office electronic filing system that allow for filings during weekends or holidays.

    2152.01

    Clarified “effective filing date” by adding “of a claimed invention”. Added cross references to MPEP §§ 216 and 2152.06 in item (D).

    2152.02(c)

    Added the USPQ cite for American Seating.

    2152.02(d)

    Added the USPQ cites for Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.

    2152.05

    In subsection I, clarified that potential references “within the one-year grace period” are excepted as prior art under 35 U.S.C. 102(b)(1)(A) and (B).

    In subsection II, revised text to make guidance text align with 35 U.S.C. 102, such as changing “filing or effective filing” to “effectively filed”. Clarified that when the issue or publication date of a reference is not before the effective filing date of the claimed invention that the reference does not qualify as 35 U.S.C. 102(a)(1) prior art.

    2152.06

    Deleted “Based on a Printed Publication or Patent” from the section heading.

    Revised text to make guidance text align with 35 U.S.C. 102, such as changing “disqualify” to “except”. Added a statement that all of the ways of overcoming a rejection under 35 U.S.C. 102(a)(1) or (2) may also be used to overcome an obviousness rejection based on 35 U.S.C. 102(a)(1) or (2) prior art.

    2152.07

    Revised form paragraphs 7.06, 7.15.01.aia, 7.15.02.aia, and 7.15.03.aia.

    2153 et seq.

    Revised text to refer to “inventor-originated disclosure” consistent with the definition set forth in MPEP § 2151.

    2153.01

    Deleted the cross reference to MPEP § 2153.01(b).

    2153.01(a)

    Revised text to better align with statutory text of 35 U.S.C. 102, such as stating the publication “is not prior art” instead of “would not be treated as prior art.”

    Clarified when the 1-year grace period is extended under 35 U.S.C. 21(b) notwithstanding the provisions of 37 CFR 1.10 and the Office electronic filing system that allow for filings during weekends or holidays.

    2153.01(b)

    Reserved. Content of this section is now contained in MPEP § 2153.01(a).

    2153.02

    Added guidance to clarify that the subject matter of the prior disclosure being relied upon must be the same “subject matter” as the subject matter previously publicly disclosure by the inventor for the prior art exceptions to apply. Added a statement to provide support for applying the exception if the subject matter of an intervening disclosure is simply a more general description of the subject matter in the inventor-originated disclosure.

    Clarified when the 1-year grace period is extended under 35 U.S.C. 21(b) notwithstanding the provisions of 37 CFR 1.10 and the Office electronic filing system that allow for filings during weekends or holidays.

    2154.01(d)

    Revised guidance to align with the statutory text and to clarify when to make a provisional rejection when there are two commonly assigned applications and one would qualify as prior art if published or patented.

    2154.02

    Revised text to refer to “inventor-originated disclosure” consistent with the definition set forth in MPEP § 2151.

    2154.02(a)

    Added text that the 35 U.S.C. 102(b)(2)(A) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under 35 U.S.C. 102(a)(2), and that there is no grace period limitation. Revised text to better align with statutory text of 35 U.S.C. 102, such as stating the prior “is excepted” instead of “may be excepted.”

    2154.02(b)

    Revised text to refer to “inventor-originated disclosure” consistent with the definition set forth in MPEP § 2151. Added guidance to clarify that the prior art exception under 35 U.S.C. 102(b)(2)(B) does not have a grace period limitation. Revised text to better align with statutory text of 35 U.S.C. 102, such as stating the prior “is excepted” instead of “may be excepted.” Added guidance to clarify that the subject matter of the prior disclosure being relied upon must be the same “subject matter” as the subject matter previously publicly disclosure by the inventor for the prior art exceptions to apply. Added a statement to provide support for applying the exception if the subject matter of an intervening disclosure is simply a more general description of the subject matter in the inventor-originated disclosure.

    2154.02(c)

    Added guidance to clarify that the prior art exception under 35 U.S.C. 102(b)(2)(C) does not have a grace period limitation. Revised text to better align with statutory text of 35 U.S.C. 102. Clarified that when the 35 U.S.C. 102(b)(2)(C) exception applies, the disclosure cannot be applied as a secondary reference in a nonstatutory double patenting rejection. Added a sentence to clarify that a statement under 35 U.S.C. 102(b)(2)(C) is required regardless of any assignment information recorded.

    2155

    Revised text to make guidance text align with 35 U.S.C. 102, such as changing “disqualify” to “except”.

    2155.01

    Clarified guidance by stating that when a claim is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to except a disclosure from being prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. Deleted the parenthetical explanation following EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc. Added illustrative examples 1-4 based on examples in the First Inventor to File Declarations training material.

    2155.02

    Revised text to make guidance text align with 35 U.S.C. 102, such as changing “disqualify” to “except”. Added illustrative examples 1 and 2 based on examples in the First Inventor to File Declarations training material.

    2155.05

    Revised text to make guidance text align with 35 U.S.C. 102, such as changing “disqualify” to “except subject matter in”.

    2156

    Deleted the references to joint research agreements under pre-AIA 35 U.S.C. 102 and 103. Added a statement to clarify that an amendment limited to adding the names of the parties to a joint research agreement is not new matter.

    2158

    Revised text to make guidance align with 35 U.S.C. 103. Clarified that when the 35 U.S.C. 102(b)(2)(C) exception applies, the disclosure cannot be applied as a secondary reference in a nonstatutory double patenting rejection.

    2158.01

    Revised form paragraphs 7.06, 7.21.01.aia, and 7.21.02.aia.

    2161.01

    Added USPQ cites to a number of citations.

    In subsection III, added a citation to Idenix Pharms. LLC v. Gilead Scis. Inc., 941 F.3d 1149, 2019 USPQ2d 415844 (Fed. Cir. 2019).

    2163

    In subsection II, added USPQ cite to the citation to Hyatt v. Dudas.

    In subsection II.A.3(a)ii, added citations to and explanation of Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 2021 USPQ2d 893 (Fed. Cir. 2021).

    In subsection II.A.3(b), added a citation to and description of Akeva LLC v. Nike, Inc., 817 Fed. Appx. 1005, 2020 USPQ2d 10797 (Fed. Cir. 2020).

    2163.03

    In subsection III, added a citation to Purdue Pharma LP v. Iancu, 767 Fed. Appx. 918, 2019 USPQ2d 136363 (Fed. Cir. 2019).

    2163.05

    In subsection III, added a citation to and discussion of General Hosp. Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 126 USPQ2d 1556, 1560 (Fed. Cir. 2018).

    2163.06

    In subsection II, revised text to clarify that the Patent Trial and Appeal Board may address new matter objections when its resolution is determinative of the rejection under appeal.

    2163.07(a)

    Added a USPQ cite to the citation to Kennecott Corp. v. Kyocera Int’l, Inc.

    2164.02

    Revised the heading to “Working and Prophetic Examples”.

    Added that claims should be drafted in a manner that assists readers in differentiating between actual working and prophetic examples. Added a citation to and description of Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293, 115 USPQ2d 2012 (Fed. Cir. 2015) and Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984).

    Added new subsection IV to provide guidance on prophetic examples.

    2164.03

    Added “in art areas having a high degree of uncertainty (i.e. the unpredictable arts)” in the last sentence.

    2164.05

    Added “based on a preponderance of evidence standard” in the last sentence of the first paragraph and also in the last paragraph.

    Added a citation to and discussion of Pac. Biosciences of Cal., Inc. v. Oxford Nanopore Techs., Inc., 996 F.3d 1342, 2021 USPQ2d 519 (Fed. Cir. 2021).

    2164.05(a)

    Added a citation to Pac. Biosciences of Cal., Inc. v. Oxford Nanopore Techs., Inc., 996 F.3d 1342, 2021 USPQ2d 519 (Fed. Cir. 2021).

    2164.05(b)

    Added a citation to and discussion of Pac. Biosciences of Cal., Inc. v. Oxford Nanopore Techs., Inc., 996 F.3d 1342, 2021 USPQ2d 519 (Fed. Cir. 2021).

    2164.06

    In subsection II, added a citation to and discussion of Pac. Biosciences of Cal., Inc. v. Oxford Nanopore Techs., Inc., 996 F.3d 1342, 2021 USPQ2d 519 (Fed. Cir. 2021).

    2164.08

    Added a citation to and discussion of Pac. Biosciences of Cal., Inc. v. Oxford Nanopore Techs., Inc., 996 F.3d 1342, 2021 USPQ2d 519 (Fed. Cir. 2021).

    2165.02

    Added pinpoint cite and year in the citation to Spectra-Physics, Inc. v. Coherent, Inc.

    2172

    In subsection I, revised the first sentence to clarify that the rejection is based on the failure of the claims to set forth the subject matter that the inventor regards as the invention.

    In subsection II, added pinpoint cites to In re Ehrreich. Deleted the phrase “it is irrelevant to compliance with” and added a cross reference to MPEP § 2172.01 for information on rejections under 35 U.S.C. 112(b).

    2172.01

    Inserted “subject” before “matter” in the heading and in the second paragraph. Corrected the pinpoint cite for In re Goffe.

    2173.02

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    Added a cross reference to MPEP § 2111.01. Added USPQ cites to a number of citations.

    In subsection I, corrected the citation to Nautilus, Inc. v. Biosig Instruments, Inc. Revised text to make it clear that during prosecution the Office construes claims by giving them their broadest reasonable interpretation consistent with the specification.

    In subsection II, added a citation to IBSA Institut Biochimique, S.A. v. Teva Pharm. USA, Inc., 966 F.3d 1374, 2020 USPQ2d 10865 (Fed. Cir. 2020).

    In subsection III.A, changed “vague and indefinite” to “indefinite”.

    In subsection III.B. and D, revised text to make it clear that during prosecution the Office construes claims by giving them their broadest reasonable interpretation consistent with the specification.

    2173.03

    Added a USPQ cite for one of the citations to In re Cohn. Added a citation to and discussion of Tvngo Ltd. (BVI) v. LG Elecs. Inc., 861 Fed. Appx. 453, 2021 USPQ2d 697 (Fed. Cir. 2021).

    2173.05(a)

    Changed the first citation to In re Packard to a full citation.

    In subsection II, added the USPQ cite for In re Packard.

    2173.05(b)

    In subsection II, clarified that a claim may be rendered indefinite when a limitation is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined.

    In subsection IV, added USPQ cites for several citations.

    2173.05(g)

    Added a federal reporter cite for Datamize LLC v. Plumtree Software Inc.

    2173.05(i)

    Added citation to and discussion of Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 2022 USPQ2d 569 (Fed. Cir. 2022). Relocated the citation to and discussion of Ex parte Parks.

    2173.05(p)

    In subsection II, added a USPQ cite for one citation to In re Katz Interactive Call Processing Patent Litigation.

    2173.05(u)

    Added a citation to and discussion of Eli Lilly & Co. v. Apotex, Inc., 837 Fed. Appx. 780, 2020 USPQ2d 11531 (Fed. Cir. 2020). Added a sentence that if the applicant replaces a trademark or trade name with a generic term, the examiner should determine if there is sufficient support and a cross reference to MPEP § 2163.

    2173.06

    In subsection I, added a USPQ cite for to In re Packard.

    2175

    Revised form paragraphs 7.34.01, 7.34.12 and 7.34.13.

    2181

    Added USPQ cites for a number of citations.

    Added citations to and discussion of Rain Computing, Inc. v. Samsung Elecs. Am. Inc., 989 F.3d 1002, 2021 USPQ2d 284, (Fed. Cir. 2021) and Media Rights Technologies, Inc. v. Capital One Financial Corp., 800 F.3d 1366, 116 USPQ2d 1144 (Fed. Cir. 2015).

    In subsection I.A, added citations to and discussion of Dyfan, LLC v. Target Corp., 28 F.4th 1360, 2022 USPQ2d 288 (Fed. Cir. 2022) and Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 126 USPQ2d 1765 (Fed. Cir. 2018).

    In subsection II.B, added a citation to Rain Computing, Inc. v. Samsung Electronics America Co., 989 F.3d 1002, 2021 USPQ2d 284 (Fed. Cir. 2021). Moved the citation to and discussion of Noah Systems Inc. v. Intuit Inc.

    2183

    Revised the Editor Note to state that the guidance in this section is applicable to all applications but the relevant time is different for AIA and pre-AIA law.

    Added pinpoint cites to Kemco Sales, Inc. v. Control Papers Co. in item (A).

    2186

    Added the U.S. reporter cite to citations to Warner-Jenkinson Co. v. Hilton Davis Chemical Co.

    2187

    Revised form paragraph 7.34.24.

    2190

    In subsection I, added citation to Hyatt v. Hirshfeld, 998 F.3d 1347, 2021 USPQ2d 591 (Fed. Cir. 2021).

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    CHAPTER 2200:

    Passim

    Revised the reference to form PTO/SB/08A or 08B to PTO/SB/08.

    2209

    Revised “Office of Public Records” to “Patent and Trademark Copy Fulfillment Branch” and “Public Records Division” to account for name changes. Added a reference to and the website address of the Certified Copy Center.

    2222

    Revised “Mail Stop Document Services” to “Mail Stop Post Issue” to account for updated address.

    2224

    Revised references the legal framework for electronic filing to “the Legal Framework for Patent Electronic System”.

    2232

    Revised “Office of Public Records” to “Patent and Trademark Copy Fulfillment Branch” and “Public Records Division” to account for name changes. Updated guidance on how to obtain a certified copy via the Certified Copy Center.

    Revised “Mail Stop Document Services” to “Mail Stop Post Issue” to account for updated address.

    2232.01

    Updated instructions on using the USPTO Intranet to determine if a reexamination request has been filed.

    2234

    Revised the reproduced text of 37 CFR 1.530(d)(1).

    2235

    Revised to include guidance on the use of “One Patent Service Gateway”, “OPSG”, or “Patent Data Portal” to support the reexamination process.

    2246; 2247

    Replaced “PALM work” with “content entry into the Office monitoring system”.

    2250

    Updated the reproduced text of 37 CFR 1.530(d)(1) and 37 CFR 1.52.

    In subsection I, updated guidance to reflect the changes to 37 CFR 1.530(d) and 37 CFR 1.52.

    2257

    Revised to state that the notice of the reexamination certificate will state that the list of cited prior art documents will be available via the USPTO’s Patent Electronic System.

    2290

    In item (C), revised to state that the notice of the reexamination certificate will state that the list of cited prior art documents will be available via the USPTO patent electronic system.

    Updated the sample reexamination certificate.

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    CHAPTER 2400:

    Passim

    Added Editor Notes to relevant sections to reflect limited applicability of World Intellectual Property Office Standard ST.25 (WIPO ST.25) and World Intellectual Property Office Standard ST.26 (WIPO ST.26).

    2401

    Revised to add reference to new rules 37 CFR 1.831-1.835.

    2412 - 2416, 2418, and 2419

    Added new sections to incorporate rules and guidance from ST.26 rulemaking.

    2420

    Revised section title to “The Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Sequence Disclosures under World Intellectual Property Office Standard ST.25 (WIPO ST.25) - the Sequence Rules” and revised to clarify that the guidance that is applicable to WIPO ST.25.

    2421

    Revised section title to “Overview of the Sequence Rules under WIPO ST.25”.

    2421.01

    Revised section title to “Definition of ‘Sequence Listing’ and Computer Readable Form (CRF)”.

    Revised to incorporate guidance from ST.25 rulemaking.

    2421.02

    Revised to incorporate guidance from ST.25 rulemaking.

    2421.03

    Revised to incorporate guidance from ST.25 rulemaking.

    Revised to clarify Office processing & jurisdiction of “Sequence Listings”.

    Revised to add further information regarding the functions of the Sequence Systems Service Center (S3C).

    2421.04

    Removed and reserved. New sequence rules in accordance with ST.26 are reflected in MPEP §§ 2412-2419.

    2422

    Revised section title to “Nucleotide and/or Amino Acid Sequence Disclosures in Patent Applications Subject to WIPO ST.25”.

    Revised to incorporate rules and guidance from ST.25 rulemaking.

    Revised subsection I title to “APPENDICES A-F REFERENCED IN 37 CFR 1.821 AND 1.822”.

    Revised subsection II title to “INTERNATIONAL AND FOREIGN APPLICATIONS”.

    2422.01

    Revised section title to “Nucleotide and/or Amino Acids Disclosures Requiring a ‘Sequence Listing’”.

    Revised to incorporate guidance from ST.25 rulemaking.

    2422.02

    Revised to incorporate guidance from ST.25 rulemaking.

    2422.03

    Revised to incorporate guidance from ST.25 rulemaking.

    Revised subsection I title to “ASCII PLAIN TEXT FILE SUBMITTED VIA USPTO PATENT ELECTRONIC FILING SYSTEM”.

    Revised subsection II title to “ASCII PLAIN TEXT FILE ON READ-ONLY OPTICAL DISC”.

    Revised subsection II.A title to “ASCII Plain Text Files Up to 300 MB”.

    Revised subsection II.B title to “ASCII Plain Text Files 300 MB or Over”.

    2422.03(a)

    Revised section title to “‘Sequence Listings’ Submitted as ASCII Plain Text Files”.

    Revised to incorporate guidance from ST.25 rulemaking.

    Revised subsection I title to “ASCII PLAIN TEXT FILES SERVE AS BOTH THE ‘SEQUENCE LISTING’ AND THE CRF”.

    Revised subsection III title to “SIZE RESTRICTIONS FOR ASCII PLAIN TEXT FILES”.

    Revised to delete references to subsection IV.C and any content related to submission of tables in an international application (PCT).

    Revised subsection IV title to “FILING A SEQUENCE LISTING IN INTERNATIONAL APPLICATIONS (PCT) VIA THE USPTO PATENT ELECTRONIC FILING SYSTEM”.

    Revised subsection IV.A title to “Sequence Listing Must Be Presented as a Separate Part of the Description”.

    Revised subsection IV.A to clarify how the PCT request (form PCT/RO/101) must be filled out to indicate that the sequence listing forms part of the international application and to provide further guidance regarding fees associated with submission of the sequence listing in international applications.

    2422.04

    Revised section title to “The Requirement for a Computer Readable Copy of the ‘Sequence Listing’”.

    Revised to incorporate guidance from ST.25 rulemaking.

    2422.05

    Removed and reserved.

    2422.06

    Revised section title to “Requirement for Statement Regarding Information Contained in the ‘Sequence Listing’ and Separate Computer Readable Form”.

    Revised to incorporate guidance from ST.25 rulemaking.

    2422.07

    Revised section title to “Requirements for Compliance and Consequences of Non-Compliance”.

    Revised to incorporate guidance from ST.25 rulemaking.

    2422.08

    Revised to state that neither the presence nor absence of information which is not required under the sequence rules creates a presumption that such information is necessary under 35 U.S.C. 112.

    2422.09

    Removed and reserved. Content moved to MPEP § 2433.

    2423

    Revised section title to “Symbols and Format To Be Used for Nucleotide and/or Amino Acid Sequence Data for WIPO ST.25”.

    Revised to incorporate rules and guidance from ST.25 rulemaking.

    2423.01

    Revised section title to “Format and Symbols To Be Used in ‘Sequence Listings’”.

    Revised to incorporate guidance from ST.25 rulemaking.

    2423.02

    Revised to replace each instance of “typed” with “listed”.

    2423.03

    Revised to replace each instance of “sequence listing” with “‘Sequence Listing’” and “identification number” with “identifier” in accordance with guidance from ST.25 rulemaking.

    2424

    Revised section title to “Requirements for Content of a ‘Sequence Listing’ Part of the Specification under WIPO ST.25”.

    Revised to incorporate rules and guidance from ST.25 rulemaking.

    2424.01

    Revised section title to “Informational Requirements for the ‘Sequence Listing’”.

    Revised to incorporate guidance from ST.25 rulemaking.

    2424.02

    Revised section title to “‘Sequence Listing’ Numeric Identifiers”.

    Revised to incorporate guidance from ST.25 rulemaking.

    2424.03

    Revised to incorporate guidance from ST.25 rulemaking.

    Revised guidance regarding identification of unpublished and published PCT applications.

    Revised to provide the website address for country codes found on the World Intellectual Property Organization (WIPO) website.

    Revised to state that questions on proper citation of international applications should be directed to staff in the Office of International Patent Legal Administration.

    2425

    Revised section title to “Form and Format for a Nucleotide and/or Amino Acid Sequence Submission as an ASCII Plain Text File under WIPO ST.25”.

    Revised to incorporate rules and guidance from ST.25 rulemaking.

    2426

    Revised section title to “Amendments to Add or Replace a ‘Sequence Listing’ and CRF Copy Thereof Subject to WIPO ST. 25”.

    Revised to incorporate rules and guidance from ST.25 rulemaking.

    2427

    Revised section title to “Form Paragraphs for Applications Subject to WIPO ST.25”.

    Revised to incorporate guidance from ST.25 rulemaking.

    2428

    Revised section title to “Sample Statements under WIPO ST.25”.

    Revised sample statements in light of the ST.25 rulemaking.

    2429

    Revised section title to “Helpful Hints for Sequence Rules Compliance under WIPO ST.25”.

    Revised tips for sequence rule compliance in accordance with the ST.25 rulemaking.

    2430

    Updated the operating system requirements for PatentIn.

    Revised to replace each instance of “sequence listing” with “‘Sequence Listing’” in accordance with guidance from ST.25 rulemaking.

    2431

    Revised section title to “Sample ‘Sequence Listing’ under WIPO ST.25”.

    Revised sample “Sequence Listing” in light of the ST.25 rulemaking.

    2433

    Contains content previously found in MPEP § 2422.09 and further revised to incorporate guidance from ST.25 rulemaking and to update Office requirements regarding hand delivery.

    2434

    Revised to state that “[a]ll pending applications are subject to Examination of Patent Applications Containing Nucleotide Sequences, 1316 OG 123 (March 27, 2007).”

    Revised to delete the second paragraph.

    2435

    Revised section title to “Publishing of Patents and Patent Application Publications with Lengthy ‘Sequence Listings’”.

    Revised to incorporate guidance from ST.25 rulemaking.

    Revised to provide updated information for obtaining patent and patent application copies. Updated information for obtaining “Sequence Listing” copies is also provided.

    Revised to state that if a patent is mailed to applicant, the Office will include a copy of the patent on paper and the “Sequence Listing” will be provided on an electronic medium (e.g., read-only optical disc) if it is not printed in the patent.

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    CHAPTER 2500:

    2501

    In subsection II, deleted “Changes to Entity Status” from the list of updates to patent post issuance automated files that are performed by Office of Patent Application Processing.

    2510

    In subsection II, updated the addresses for maintenance fee payments submitted by mail or a delivery service.

    In subsection IV, updated the address for hand-carried maintenance fee payments.

    2550

    Reorganized text by relocating subheading I and the former second and third paragraphs because the remaining preamble text before subsection I applies generally to entity status discounts.

    2590

    Added “See subsection I below for explanation” to the first paragraph relating to acceptance of delayed maintenance fee payments.

    Added a citation to Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222 (March 2, 2020) and a statement that delay of more than two years after the date of nonpayment of a maintenance fee requires additional information to show the delay was unintentional.

    In subsection I, added a citation to Rembrandt Technologies LP v. Comcast of Fla./Pa., LP, 899 F.3d 1254, 127 USPQ2d 1826 (Fed. Cir. 2018) and a statement that a petition seeking reinstatement of an expired patent more than two years after the date of expiration for nonpayment of a maintenance fee must provide additional explanation of the circumstances surrounding the delay that establishes the entire delay was unintentional. Also added a citation to MPEP § 711.03(c) for further discussion of the “unintentional” delay standard.

    [top]

    CHAPTER 2700:

    2701

    Corrected the Public Law citation for the Patent Law Treaties Implementation Act of 2012.

    2730

    Inserted subsection heading “I. 37 CFR 1.792 - GROUNDS FOR ADJUSTMENT”. This subsection contains existing text.

    Inserted subsection heading “II. 37 CFR 1.703 - PERIOD OF ADJUSTMENT”. This subsection contains existing text.

    Inserted subsection heading “III. 37 CFR 1.704 - REDUCTION OF ADJUSTMENT”. This section contains existing text concerning 37 CFR 1.704 and further revised the reproduced text of 37 CFR 1.704, the associated Editor Note and the associated discussion to reflect the changes to the rule in rulemaking Patent Term Adjustment Reductions in View of the Federal Circuit Decision in Supernus Pharm., Inc. v. Iancu, 85 FR 36335 (June 16, 2020) (hereinafter “Supernus final rule”). For example, three new paragraphs were added at the end of subsection III to discuss the changes made in the Supernus final rule.

    Inserted subsection “IV. 37 CFR 1.705 - DETERMINATION OF PATENT TERM ADJUSTMENT”. This section contains existing text.

    2731

    Inserted subsection heading “I. PERIODS OF ADJUSTMENT”.

    Inserted subsection heading “[I.]A. 37 CFR 1.703(a)(1) - Longer than Fourteen Months to Receive First Action”. This subsection includes existing text concerning 37 CFR 1.703(a)(1) and is further revised to replace “For any early processing request, the” with “The” in the first paragraph; reorganize the text discussing what constitutes a notification under 35 U.S.C. 132; and add a citation to and discussion of Idorsia Pharm., Ltd. v. Iancu, 811 Fed. App’x 650, 2020 USPQ2d 10498 (Fed. Cir. 2020).

    Inserted subsection heading “[I.]B. 37 CFR 1.703(a)(2) - Longer Than Four Months to Receive Action After a Reply under 35 U.S.C. 111”. This subsection includes existing text.

    Inserted subsection heading “[I.]C. 37 CFR 1.703(a)(3) - Longer Than Four Months to Receive Action After a Reply in Compliance 35 U.S.C. 113(c)”. This subsection includes existing text.

    Inserted subsection heading “[I.]D. 37 CFR 1.703(a)(4) - Longer Than Four Months to Receive Action After an Appeal Brief in Compliance with 37 CFR 41.37”. This subsection includes existing text.

    Inserted subsection heading “[I.]E. 37 CFR 1.703(a)(5) - Longer Than For Months to Receive Action After a Final Decision by the Board or a Federal Court”. This subsection includes existing text.

    Inserted subsection heading “[I.]F. 37 CFR 1.703(a)(6) - Longer Than Four Months to Issue Patent After Payment of the Issue Fee”. This subsection includes existing text.

    Inserted subsection heading “II. THREE-YEAR PENDENCY ADJUSTMENT”. This subsection includes existing text and is further revised to add “or derivation” after “consumed by interference” in the first paragraph. Changed the citation from Mayo v. Iancu, 309 F.Supp.3d 425 (E.D. Va. 2018) to Mayo Found. for Med. Educ. & Research v. Iancu, 938 F.3d 1343, 2019 USPQ2d 346079 (Fed. Cir. 2019).

    Inserted subsection heading “III. PERIODS OF ADJUSTMENT FOR INTERFERENCE OR DERIVATION”. This subsection includes existing text.

    Inserted subsection heading “IV. PERIODS OF ADJUSTMENT FOR APPLICATIONS UNDER A SECRECY ORDER”. This subsection includes existing text.

    Inserted subsection heading “V. PERIODS OF ADJUSTMENT FOR SUCCESSFUL APPEAL”. This subsection includes existing text.

    Inserted subsection heading “VI. DETERMINATION OF ADJUSTMENT”. This subsection includes existing text.

    2732

    Revised the reproduced text of 37 CFR 1.704, the associated Editor Note and the associated discussion to reflect the changes in the Supernus final rule.

    Inserted subsection heading “I. 37 CFR 1.704(a)”. This subsection includes existing text.

    Inserted subsection heading “II. 37 CFR 1.705(b)”. This subsection includes existing text and is further revised to replace the citation to and quote from Intra-Cellular Therapies, Inc. v. Matal, 2018 WL 852368, 1:17-CV-00776 (E.D. Va. 2018) to Intra-Cellular Therapies, Inc. v. Iancu, 938 F.3d 1371, 1384, 2019 USPQ2d 350004 (Fed. Cir. 2019).

    Inserted subsection heading “III. 37 CFR 1.704(c)”. This subsection includes existing text and is further revised to add a citation to and discussion of Supernus Pharm., Inc. v. Iancu, 913 F.3d 1351, 129 USPQ2d 1240 (Fed. Cir. 2019) and add a new paragraph that discusses the Supernus final rule.

    Inserted subsection heading “[III.]A. 37 CFR 1.704(c)(1) - Suspension of Action”. This subsection includes existing text.

    Inserted subsection heading “[III.]B. 37 CFR 1.704(c)(2) - Deferral of Issuance”; “[III].C 37 CFR 1.704(c)(3) - Abandonment or Late Payment of the Issue Fee”; “[III.]D. 37 CFR 1.704(c)(4) - Petition to Withdraw Holding of Abandonment or Revive Application”; “[III.]E. 37 CFR 1.704(c)(5) - Conversion of a Provisional Application”; “[III.]F. 37 CFR 1.704(c)(6) - Submission of Preliminary Amendment or Paper”; “[III.]G. 37 CFR 1.704(c)(7) - Submission of a Reply with an Omission”; “[III.]H. 37 CFR 1.704(c)(8) - Submission of a Supplemental Reply or Paper”; “[III.]I. 37 CFR 1.704(c)(9) - Submission of an Amendment or Paper after Board or Court Decision”; “[III.]J. 37 CFR 1.704(c)(10) - Submission of an Amendment or Paper after Notice of Allowance”; “[III.]K. 37 CFR 1.704(c)(11) - Failure to Timely File an Appeal Brief”; “[III.]L. 37 CFR 1.704(c)(12) - Filing of a Request for Continued Examination after Notice of Allowance”; “[III.]M. 37 CFR 1.704(c)(13) - Failure to Timely Provide an Examination Ready Application”; and “[III.]N. 37 CFR 1.704(c)(14) - Prosecution via a Continuing Application”. These subsections include existing text and are further revised in accordance with changes made by the Supernus final rule.

    In subsection III.G. revised text in accordance with ST.26 rule changes.

    In subsection III.N. corrected citation of Mohsenzadeh v. Lee.

    Inserted subsection heading “IV. 37 CFR 1.704(d)”. This section includes existing text and is revised to include the reproduction of form PTO/SB/133.

    Inserted subsection heading “V. 37 CFR 1.704(e)”. This section includes existing text.

    Inserted subsection heading “VI. 37 CFR 1.704(f)”. This section includes existing text and is further revised in accordance with ST.26 rule changes.

    2734

    In subsection I, deleted the sentence regarding PALM not being originally designed to calculate PTA.

    2750

    Revised to added a citation to and discussion of Biogen Int’l GmbH v. Banner Life Scis. LLC, 956 F.3d 1351 (Fed. Cir. 2020).

    2751

    In subsection II, added a citation to and discussion of Biogen Int’l GmbH v. Banner Life Scis. LLC, 956 F.3d 1351 (Fed. Cir. 2020). In the following sentence, revised the citation to 35 U.S.C. 156(b) to 35 U.S.C. 156(g) and added “as required by 35 U.S.C. 156(a)(5)(A)”. In the following sentence, changed “If neither it” to “If neither the active ingredient of the drug product”.

    2753

    After “Mail Stop Hatch-Waxman PTE”, inserted “Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450”.

    2754.01

    Revised to add a parenthetical “(defined in 35 U.S.C. 156(i)(2))” after “covered date”.

    2761

    Deleted the last paragraph discussing multiple approval applications.

    2766

    Revised to add a sentence that the petition should include any updated information that has changed in light of the scope of the patent claims in the reissued patent in the discussion involving a petition under 37 CFR 1.182. Added a new paragraph to state that the original patent grant date would be used to calculate the extension to which the reissued patent would be entitled.

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    CHAPTER 2800

    2803.02

    Revised “Document Services” and “Office of Public Records” to “Patent and Trademark Copy Fulfillment Branch” and “Public Records Division”.

    Added a link to the website address of the Certified Copy Center.

    2805

    Revised “Mail Stop Document Services” to “Mail Stop Post Issue”.

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    CHAPTER 2900

    2901

    In subsection II.A, revised to state that an international design application may be filed indirectly at the office of the applicant’s Contracting Party or directly with the International Bureau. Text was added to state that filing indirectly requires that the applicant must meet the specified requirements and that the USPTO is an office of indirect filing.

    In subsection II.B, amended text to add that the International Bureau accords a filing date and an international registration date and registers the industrial design in the International Register and what international registration includes, which was text moved from subsection II.C.

    In subsection II.C, deleted “Registration and” from the heading and moved the first paragraph that discussed registration to subsection II.B. Revised the text to add that applicants may control the timing of publication to some extent by requesting immediate publication after the international registration. Added two new paragraphs discussing that a copy of the publication of the international registration is communicated to each designated Office and that for certain Contracting Parties, the date of publication may trigger a time period to furnish certain submissions required by the Contracting Party.

    In subsection II.D, amended text that substantive examination, if required under a Contracting Party’s laws, will occur after publication and that some Contracting Parties carry out limited or no substantive examination. Added a reference to the International Bureau’s Hague Member Profiles database for further information regarding the scope of substantive examination. In addition, added a new paragraph that discusses how the notification of refusal is communicated.

    Added new subsection II.E that discusses the effect of international registration.

    2905

    Added a new paragraph that discusses filing indirectly with the USPTO or directly with the International Bureau.

    2905.01

    Updated the title of form PTO-2320. Added two new paragraphs that discuss contacting the USPTO if applicant has not received form PTO-2320 prior to the expiration of the six month period that the application must be received by the International Bureau and a reference to the EFS-Web Quick Start Guide for filing an international design application indirectly at the USPTO.

    2909

    Updated the text of Hague Rule 7(3)(ii) and (5)(b).

    Added the reproduction of Hague Administrative Instructions Section 408.

    In subsection III, updated the listing of optional content items (4) and (5).

    In subsection IV, added text that use of the official application form will help ensure that applicants designating the United States will satisfy the requirement for a claim. In addition, added a reference to Annex I and that the brief description of the reproductions should be included in Item (10).

    2909.01

    Updated text regarding information required to fill out the DM/1 form and added a reference to eHague, the International Bureau’s electronic filing system.

    2909.02

    Updated the section title of the Hague Guide for Users.

    Changed “EFS-Web Legal Framework” to “Legal Framework for Patent Electronic System”.

    Added a new last paragraph that discusses refusal by a Contracting Party of the effects of international registration under Rule 9(4).

    2909.02(a)

    Added a reference to the EFS-Web Quick Start Guide for International Design Application filings.

    2909.03

    Revised to include a description for Annexes I-V and to state that Annex II and V are specific to the designation of the Republic of Korea.

    2910

    Updated the reproduced text of 37 CFR 1.1031.

    Revised the listing of fees that apply to an international design application and updated the description of the online fee calculator tool.

    In subsection I, added a paragraph that states that the transmittal fee is discounted for small and micro entities.

    In subsection II, added “Additional Word Fee” to the heading. In the second paragraph, changed “A separate designation fee” to “A standard or individual designation fee” to better align with the rest of the text in the subsection. Moved the reference to the WIPO website for the individual designation fees. Deleted the cross reference to MPEP § 2920.06 and added text describing the parts of the United States designation fee. In addition, added a paragraph regarding the additional word fee.

    2911

    Updated Hague Rule 3(2)(a) and (2)(c).

    Added text that the communication appointing a representative must give certain required information and that the naming of a representative at the time of filing constitutes an appointment of that representative. Also added a new paragraph regarding forms available on the International Bureau’s website.

    2912

    Changed “boxes” to “items.”

    Removed the reproduction of Hague Administrative Instruction 302 and revised the discussion of how the Office will correspond with the applicant when no correspondence address has been properly specified.

    2920

    Added text that the U.S. application number corresponding to the international registration may be found by searching the international registration number using Patent Center.

    2920.01

    Added a new paragraph that discusses laws of certain foreign countries compared to U.S. law regarding inventors being a legal entity and added new form paragraph 29.04.

    2920.02

    Deleted the sentence that stated that the original applicant specified is the person identified as the applicant in the publication of the international registration and changed “application data sheet” to “corrected application data sheet” or “corrected ADS.” In addition, added a sentence that states that the recording of the name change pursuant to Article 16(1)(ii) must be made no later than payment of the issue fee.

    2920.04(a)

    In subsection I, added a paragraph to describe how a title may be added in a nonprovisional international design application even though the Hague Agreement does not provide for application titles. In addition, added text further describing examination procedures when the article named in the title does not correspond to the article named in the claim and amendments to the title.

    Revised form paragraphs 15.05.01 and 15.59. Added new form paragraphs 29.59.01 and 29.59.02.

    In subsection II, added a new paragraph cautioning applicants against using “reference view” and a new paragraph regarding color drawings or photographs.

    Revised form paragraphs 29.22, 29.24, and 29.26. Added reproduction of new form paragraphs 29.60.02 and 29.61.01.

    2920.04(b)

    Revised section heading by adding “Figures” after “Drawings”.

    Deleted the sentence briefly describing the provisions of Administrative Instructions 401, 403, and 405 and added a new paragraph that discusses figure numbering requirements in more detail.

    2920.05(a)

    Changed “This refusal of effect …” to “This refusal of the effects of an international registration …” Revised text to clarify that grounds of refusal may also be based on applicant’s action “taken prior to examination” or by “the renunciation of the designation of the United States (see MPEP § 2930).” Added a new paragraph that discusses that the Hague system does not require any submission to initiate examination at the USPTO.

    Added new form paragraphs 29.100 and 29.101 and associated discussion.

    2920.05(b)

    Added new paragraphs discussing drawing and inventorship changes following cancellation of non-elected embodiments and filing of divisional applications to protect designs cancelled due to a restriction requirement.

    Added new form paragraph 29.102.

    2920.05(d)

    Added “corrected” prior to “application data sheet” and a reference to MPEP § 601.05(a). Added two new paragraphs discussing making priority claims in accordance with Administrative Instruction 408.

    2920.05(f)

    Added a reference to 37 CFR 1.33(b), Annex III and the DM/1 form in the last paragraph.

    2920.06

    Revised the last paragraph to state that the issue fee paid through the International Bureau is established in Swiss currency pursuant to Rule 28 as of the date of mailing of the notice of allowance.

    2930

    Added subsections headings “I. Corrections under Hague Rule 22” and “II. Recording of changes under Hague Article 16”.

    In subsection I, added “effects of the” prior to “correction in accordance….” Added text stating that Rule 22 correction will be annotated to reflect whether it is entered or not and if entered, a corrected filing receipt will be issued.

    In subsection II, added a listing of the changes that are recorded in the International Bureau. Clarified that Article 16(1)(i) and Article 16(2) are the provisions for recording a change in ownership and its effect in a Contracting Party. Added four new paragraphs at the end of the subsection discussing the recording of certain changes and the effect of any changes in the representation before the USPTO.

    2950

    Revised the reproduced text of 37 CFR 1.1031(e).

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    CHAPTER FPC:

    Chapter FPC provides a consolidated listing of the form paragraphs found in the numbered chapters of the MPEP. The FPC sections within Chapter FPC are organized by form paragraph number and do not necessarily correspond to the chapters of the MPEP in which the form paragraphs appear. The Subject Matter Index may be consulted to locate the MPEP section(s) wherein a given form paragraph is reproduced.

    An indication of the form paragraphs being revised, deleted, or added are indicated in the summary of changes organized by MPEP sections above.

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