Introduction & Contacts
This notebook contains a compilation of recent rulemaking materials
and published guidelines concerning patent examination policy and
procedure. The rulemaking materials include both the Patent Business
Goals (PBG) - Final Rule and the rules codifying the American Inventors
Protection Act of 1999, (AIPA).
The rulemaking process resulting in the Patent Business Goals (PBG)
- Final Rule was part of the Agency's continuing efforts to streamline
and simplify the process of applying for and obtaining patent protection
for new inventions. In 1999, the USPTO established business goals
for the organizations reporting to the Commissioner for Patents.
These "Patent Business Goals" subsequently were adopted as part
of the Fiscal Year 1999 Corporate Plan Submission to the President.
A major focus of the Patent Business Goals was to increase the level
of service to the public by raising the efficiency and effectiveness
of the Office's business processes. In furtherance of these Goals,
the PBG-Final Rule made changes to selected regulations to take
a fresh view of the business end of issuing patents, to continue
a process of simplification, and to achieve the following four objectives:
(1) to reduce the time required to review applications and eliminate
unnecessary conditions of applying for and obtaining a patent, (2)
to remove impediments to electronic filing, processing and publishing
of patent applications, (3) to reduce costs to the public and to
the Office, and (4) to clarify several very technical rules to better
inform the public how to proceed and to make it easier for Office
personnel to determine compliance with the rules.
The American Inventors Protection Act of 1999 was enacted on November
29, 1999, as part of Public Law 106-113 (Consolidated Appropriations
Act for Fiscal Year 2000). The AIPA includes eight subtitles, (A-H),
which make fundamental changes to the patent law and the United
States Patent and Trademark Office. The changes of Subtitle D, "Patent
Term Guarantee Act of 1999," Subtitle E, "Domestic Publication
of Patent Applications Published Abroad Act of 1999," and Subtitle
F, "Optional Inter Partes Reexamination Procedure Act
of 1999," have been implemented via one Interim and four Final
Rule packages, the Federal Register notices for each being
The changes made in the PBG - Final Rule and the AIPA Interim and
Final Rules will be incorporated into the eighth revision of the
Manual of Patent Examining Procedure, (MPEP). While this Training
and Implementation Guide is designed to bridge the gap until publication
and dissemination of the eighth revision of the MPEP, it is also
designed to be a single source of information for USPTO employees
and the public concerning these rules that can be used subsequent
to or in combination with the eighth revision of the MPEP.
The rulemaking materials and the AIPA examination guidelines were
prepared and implemented under the direction of Stephen G. Kunin,
Deputy Commissioner for Patent Examination Policy, Robert J. Spar,
Director of the Office of Patent Legal Administration, and the Legal
Advisors of the Office of Patent Legal Administration. The patent
examination guidelines were prepared and implemented under the direction
of Stephen G. Kunin, Deputy Commissioner for Patent Examination
Policy, Magdalen Greenlief, Editor of the MPEP, and Linda Therkorn,
Assistant Editor of the MPEP.
The latest information concerning the PBG and the AIPA can be obtained
from the separate home pages that have been established on the Office’s
This Notebook includes Portable Document Format (PDF)
files which requires a PDF file reader program. Please see our Document
Formats and Viewers page.
|Robert J. Spar, Director
Office of Patent Legal Administration
Office of the Deputy Commissioner for Patent Examination Policy
to the top
|§§ 1.9, 1.22, 1.26 through 1.28, 1.41, 1.48, 1.56, 1.85(c),
1.97, 1.98, 1.105, 1.111, 1.115, 1.131,1,132, 1.133,
1.136, 1.322 through 1.324, Part 3, and Part 10.
|§§ 1.9, 1.27, 1.28, 1.53, 1,55,
1,76, and 1.78
||Eugenia Jones (571)272-7727
|§§ 1.14, 1.33, 1.44, 1.47, 1.51, 1.52 (except (b)(2) and
(b)(6)), 1.59, 1.63, 1.64, 1.67, 1.77, 1.84, 1.85 (except
(c)), 1.138, 1.163, and 1.720 et seq.
|§§ 1.22, 1.25, 1.26, 1.52(b)(2), 1.112, 1.193, 1.311-1.313,
1.366, and processing and petition fees
|§§ 1.52(b)(6), 1.72, 1.121,
1.125, and 1.173 et seq.
|§§ 1.53, 1.55, 1.63 (oath or
declaration) form, and 1.78
|§§ 1.96, and 1.821 et seq.
|§§ 1.97, 1.98, 1.137, 1.173
et seq., 1.510 et seq., and Part 3
|§§ 1.152 et seq. and Part 5
|Electronic Filing System (EFS)
||Off. of Finance
|Inter Partes Reexamination
|Invention Promotion Companies/Complaints
||Inventors Assistance Center (IAC)
(1-800)786-9919 or (703)
|PAIR (Patent Application Information Retrieval)
|Patent Term Adjustment (PTA) and Pre-grant Publication of
Applications (PG Pub)
|Requests for Continued Examination (RCE)
|35 U.S.C. 102(e), 102(g) and/or 103(c)
Patent Examination Guidelines
|35 U.S.C. 112, Paragraph 6
|Utility Examination Guidelines
|35 U.S.C. 112, Paragraph 1, "Written Description"
|35 U.S.C. 103 Rejections for Business Method