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719    File Wrapper [R-11.2013]

The electronic file record in which the U.S. Patent and Trademark Office maintains the application papers is referred to as an image file wrapper. The electronic file record is the official record of the application.

See MPEP § 202 for appropriate notations to be made in the file history with regard to claims for priority to, or the benefit of, earlier filed applications under 35 U.S.C. 119, 120, 121, and 365.

719.01   Papers in Image File Wrapper [R-11.2013]

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 No paper legally entered in the image file wrapper should ever be withdrawn or expunged from the application file, especially a part of the original disclosure of the application, without special authority of the Director.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

¶ 7.214    Papers Not Returned, Pro Se

Papers in an application that has received a filing date pursuant to 37 CFR 1.53 ordinarily will not be returned. If applicant has not preserved copies of the papers, the Office will furnish copies at applicant’s expense. See 37 CFR 1.19 for a list of the current fees. See MPEP § 724.05 for information pertaining to petitions to expunge information.

719.02   Residence of Inventor Changed [R-11.2013]

The distinction between “residence” and mailing address should not be lost sight of. See MPEP § 608.02(a)

.

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

For a patent application publication to be published with residence information that differs from that originally filed, the revised information must be entered into the Office electronic records at least nine weeks before the publication date of the application. For patent applications filed on or after September 16, 2012, in order for a patent to issue with the new residence, applicants must file a new Application Data Sheet (37 CFR 1.76) showing the new residence information. For applications filed prior to September 16, 2012, applicants are strongly encouraged to file an Application Data Sheet showing the new residence information.

719.03   Classification During Examination [R-08.2012]

When a new application is received in a Technology Center, the classification of the application and the initials or name of the examiner who will examine it or other assigned docket designation are noted in the application file. See also MPEP § 903.08(b).

719.04   Index of Claims [R-11.2013]

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

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

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

719.05   Field of Search [R-11.2013]

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

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

Searches are separated into two categories and listed, as appropriate, in either the “SEARCHED” box or "SEARCH NOTES" box of the OACS "Search Notes" page.

I.   “SEARCHED” BOX ENTRIES

The following searches will be recorded in the “SEARCHED” box section of the OACS “Search Notes” page by the examiner along with the date and the examiner’s initials, according to the following guidelines:

  • (A) A classification search. A classification search is defined as a complete search of all the documents in a particular subclass, whether filed by CPC, U.S. or IPC classification and it is not limited by any text query or other means. If a classification search was performed, the class and subclass must be recorded in the “SEARCHED” box section of the OACS “Search Notes” page along with the date that the search was performed (or updated) and the examiner’s initials. Unless a classification search as defined was performed, it would be improper to merely record the class and subclass in the “SEARCHED” box without any indication that a limited classification search was performed.
    Examples

    424/270, 272, 273

    224/42.1 F

    414/DIG. 4

    166/55 - 55.8

    D3/32 R

    A61K 9/22

  • (B) When a classification search made in a parent application is updated during the examination of a continuing application, those searches updated, followed by “(updated from parent S.N. ............)” will be recorded. If the parent application has been patented, the patent number “Pat. N. ............” instead of application number in the above phrase will be recorded. The examiner should recopy the entire search updated from the parent on the file of the continuing application to the extent pertinent to the continuing application.
    Examples

    273/29 BC (updated from

    343/114.5 parent S.N. 08/495,123)

    116/DIG.47 (updated from

    D7/73, 74 parent Pat. N. 4,998,999)

    For IFW processing, see IFW Manual section 3.7.

  II. “SEARCH NOTES” BOX ENTRIES

Entries made in the “SEARCH NOTES” box are of equal importance to those placed in the “SEARCHED” box. They are intended to complete the application file record of areas and/or documents considered by the examiner in his or her search. The examiner will record the following searches in this box and in the manner indicated, with each search dated and initialed:

  • (A) A limited classification search. A limited classification search is defined as a search of a patent document classification database limited by a text query or a set of text queries or other means. If a limited classification search was performed, the class and subclass followed by an appropriate annotation must be recorded in the “SEARCH NOTES” box section of the OACS “Search Notes” page along with the date that the search was performed (or updated) and the examiner’s initials.
    Examples

    414/1 (U.S. only)

    238/6 (1954 to date)

    250/13 (cursory)

    705/14 (text search only – see search history printout)

    4C083 AC10 (F-term, abstract only)

    A61B 5/00N4P (ECLA, text search of full doc – see search history printout)

    G06F1/2 (text search only – see search history printout)

  • (B) Text search only was performed in a particular database (no classification or limited classification search was performed). If a text search was performed in a particular database and no classification or limited classification search was performed, the following entry must be recorded in the “SEARCH NOTES” box section of the OACS “Search Notes” page: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. A copy of the search history printout must be included in the application file.

    The staff of the Scientific and Technical Information Center (STIC) provide non-patent literature searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form. The form is available from the STIC intranet Web site (http://w-pattr-05/stic/npl/index.cfm) or at the EIC. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC staff. The full text of any citations included in the search will be provided at the examiner’s request. EIC staff can also assist examiners in conducting their own search of NPL databases. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry must be recorded in the “SEARCH NOTES” box section of the OACS “Search Notes” page: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials.

  • (C) A consultation with other examiners to determine if relevant search fields exist in their areas of expertise.

    If the subclass is not searched, record the class and subclass discussed, followed by “(consulted).” This entry may also include the name of the examiner consulted and the art unit.

    Examples

    24/ fasteners (consulted)

    24/ fasteners (consulted J. Doe A.U. 3501)

    24/201 R-230 AV (consulted)

  • (D) Many publications that were searched manually in the past can now be searched electronically. Electronic journals and electronic books are available to examiners on their desktop via http://w-pattr-05/stic/npl/index.cfm). Examiners should contact their EIC if they need assistance using these tools.

    A search of a publication in paper form located through a manual search (non-electronic search), e.g., a library search, a text book search, a Chemical Abstracts search, etc. Record according to the following for each type of literature search:

    • (1) Abstracting publications, such as Chemical Abstracts, record name of publications, list terms consulted in index, and indicate period covered.
      Examples

      Chem. Abs, Palladium hydride Jan.-June 1975

      Eng. Index, Data Conversion Analog to Digital 1975

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

      Popular Mechanics, June-Dec. 1974

      Lubrication Engineering, vols. 20-24

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

      Introduction to Hydraulic Fluids, Roger E. Hatton, 1962

    • (4) Other types of literature not specifically mentioned herein (i.e., catalogs, manufacturer’s literature, private collections, etc.).

      Record data as necessary to provide unique identification of material searched.

      Example

      Sears Roebuck catalog, Spring-Summer, 1973.

      A cursory or browsing search through a number of materials that are not found to be of significant relevance may be indicated in a collective manner, e.g., “Browsed STIC shelves under QA 76.5” or “Browsed text books in STIC relating to......................” More detailed reviews or searches through books and periodicals or any search of terms in abstracting publications should be specifically recorded, however.

  • (E) A review of art cited in a parent application or an original patent, as required for all continuation and continuation-in-part applications, divisional applications, reissue applications and reexamination proceedings, or a review of art cited in related applications.

    Record the application number of a parent application that is still pending or abandoned, followed by “refs. checked” or “refs. ck’ed.” If for any reason not all of the references have been checked because they are not available or clearly not relevant, such exceptions should be noted.

    Examples

    S. N. 495,123 refs. checked

    S. N. 490,000 refs. checked

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

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

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

    Examples

    Pat. 3,900,000 refs. checked

    Pat. 3,911,111 refs. ck’ed

A.   Search History Printouts

Any time that an electronic search was performed (i.e., limited classification search, or text search), examiners must include a complete search history in the application file. The search history must include the following minimum information:

  • (1) all the search logic or chemical structure or sequence(s) used as a database query;
  • (2) all the name(s) of the file(s) searched and the database service;
  • (3) the date the search was made or updated; and
  • (4) the examiner’s initials (unless the search engine, e.g., EAST or WEST has automatically provided the examiner’s user name on the search history printout).

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

    Regarding nucleotide and peptide sequence searches, these searches are stored in SCORE (The Supplemental Complex Repository for Examiners), which is part of the permanent file wrapper and satisfies all National Archives Electronic Records Management requirements. The following entry should be recorded in the “SEARCH NOTES” box section of the OACS “Search Notes” page: “See sequence search results in SCORE” along with the date the search was performed and the examiner’s initials.

Most of the database services accessed in application searches provide a command to display or print the search history which includes most, if not all, of the minimum required information for documenting database searches. Table 1 below lists the history command for each database service and which of the required minimum documentation elements are missing when the history command is entered. The missing elements may be documented by writing them on the printout of the search history or by supplying further portions of the search transcript which do include the missing elements. In some instances, depending on the database service, the log off command will supply the missing data element. For example, this is the case with searches in STN and Questel-Orbit; the name of the database service is not provided by entering the history command and must be supplied by the inclusion of the log off command. Another example is with WEST. Neither the Freeform Search page nor the Show S Numbers page prints the date of the search, therefore, the date of the WEST search must be documented in writing.

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

TABLE 1
History Commands and Missing Elements by Database Service
Database Service History Command Name of Database Service Search Logic Name of File Searched Date of Search
Dialog via Dialoglink ds; show files2 no yes yes missing3
DialogWeb click on the print button in the toolbar before changing files or logging off yes in lower left corner of document as part of http address yes only first file in a multi-file search; to list files searched use show files command and press the print button in the toolbar not part of the DialogWeb printout statement however the lower right hand corner of a Web page printout does list a date; and logoff command does give a timestamp
STN his full or d his nofile yes yes yes yes
STN on the Web transcript option is on by default and saves results in the transcript files for 4 days after logoff; results can be viewed in various formats including pdf and rtf yes (in the transcript) yes (in the transcript) yes (in the transcript) yes (in the transcript)
Questel-Orbit hi2 or his2 no5 yes yes missing3
Questel-Orbit QWEB his yes at upper left hand corner and Web site address at lower left hand corner yes yes lower right hand corner as default date stamp when printing Web pages; date stamp on screen printout of logoff command page
Lexia NexisTM via the Web click on the View Printable History button and click on the Print icon button in the toolbar yes press the history hyperlink button in the upper right hand corner of the screen to view the search history on the results page click the "i" button next to the combined source set number to view and print files searched; use the <control> <p> command to print the screen yes
ABSS System none yes3 yes4 yes yes
EAST View-Search History-Print All...8 yes yes yes yes
WEST in Search History on the Freeform, Structured, or Classification search page, select Printable Copy. Use print command or icon to print search history yes yes yes missing11
IEEE Xplore under Search tab in toolbar use the dropdown menu, click session history; print page yes yes yes yes
Knovel print out search results page yes yes yes date stamp10
EBSCO HOST print out search results page yes yes yes date stamp10
Proquest print out search results page or click on My research and print list of all searches with dates yes yes, on last page yes, if single file, if multiple files will only state multiple databases date stamp10
Ip.com print out search results page yes yes, on last page yes yes
Scirus print out search results page yes yes yes date stamp10
ACM Digital Library print out search results page yes yes yes date stamp10
INSPEC print out search results page yes yes yes date stamp10
SPIE Digital Library print out search results page yes yes yes date stamp10
Research Disclosure download search results as text yes yes yes date stamp10
2 Need to enter history command for each file searched before changing file or logging off.
3 Information provided as part of search result file for each request.
4 Search query sequence provided as part of search result file for each request.
5 Displayed by log off command.
8 Make sure that the Active, Saved, and Favorites files are selected.
10 The date that the site was accessed is either on the printout page itself or in the URL which is at the bottom of the printout. This will almost always be the date that the search was performed. If not, enter the date of the search in BLACK INK.
11 WEST will show the date that the search history is printed rather than the date of the search. Thus, the date of the search must be written in BLACK INK unless the search was conducted on the same day that the search history was printed.

B.   Explanation of Table Terminology

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

Name of Database Service - Most services do not display this information as part of the search transcript. None of the services in the table, except EAST and WEST, list that information as part of the history command. However, Questel-Orbit, and STN supply the name of the database service during log off.

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

Name of File Searched - This is the name of the collection of data accessed. In some services, the file name is only displayed when the file is selected and not in response to the history display command; Dialog and Questel-Orbit are two such services. For example, Dialog supplies only the file number with the log off command. The file number alone is not adequate documentation of a search. The name of the file is required.

Date of Search - WEST, Dialog, and Questel-Orbit do not display the date of search as part of the history command. Dialog and Questel-Orbit supply the date of search during log off. WEST will only show the date that the search history command is executed rather than the date of the search. Thus, the date of search for WEST must be written on the search report unless the search was conducted on the same day that the search history was executed.

C.   Internet Search Engines

For Internet search engines, such as Google®, Yahoo®, and Bing®, print out the first page and any of the following pages that include names of any Web pages reviewed during the search. Use the print icon on the Microsoft Internet Explorer® toolbar or use the file-print command. Review the printout to determine if the Internet search engine name, , the search logic, and the date of the search are present. If any of these are missing, write the missing information on the printout. Circle all Web pages reviewed.

D.    Other Databases

For other types of publicly accessible computer accessed databases (e.g., CD-ROM databases, specialized databases, etc.), record data as necessary to provide unique identification of material searched and sufficient information as to the search query or request so that the search can be updated. The record should also document the location of the database and its form (CD-ROM, etc.).

Example: Citing a biotech CD-ROM database

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

Example: Citing a nonbiotech CD-ROM database

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

III.   INFORMATION NOT RECORDED IN THE APPLICATION FILE

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

Form PTO 1590. Search Request Form
Search Notes Form

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Last Modified: 03/27/2014 10:10:36