uspto.gov
Skip over navigation

Change Summary for the Ninth Edition, Revision 07.2015

    Change Summary for the Ninth Edition, Revision 07.2015

    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 November 2015

      

    Executive Summary

    Chapters and AppendicesNovember 2015 Publication of Revision 07.2015

    The November 2015 publication of Revision 07.2015 substantively revises MPEP §§ 2131.03, 2144.05, 2161, 2161.01, 2163, and 2181, and Appendix II. The PDF copies of MPEP Chapters 600, 700, 800, 1200, and FPC have also been re-dated to “November 2015” due to minor form paragraph revisions in these documents.

    October 2015 Publication of Revision 07.2015

    The October 2015 publication of Revision 07.2015 includes the following changes:

    Substantive revisions to all Chapters of the MPEP exceptChapters 1200, 1400, 1600, 1900, 2000, and 2300 (see the Summary of Changes Editor Note below for minor changes made to Chapters 1200, 1400, and 2300); the addition of Chapter 2900 entitled "International Design Applications" and Chapter FPC entitled "Form Paragraphs Consolidated"; and updates to the Table of Contents, Introduction, Subject Matter Index, and all Appendices except Appendix I and Appendix P.

    The revised chapters and appendices incorporate changes to the laws, rules, and practice necessitated by, or made as a result of, the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012). The Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) as set forth in Title I of the PLTIA is effective as of May 13, 2015; the Patent Law Treaty (PLT) Implementation as set forth in Title II of the PLTIA is effective as of December 18, 2013. Editor Notes have been added to or revised in sections having limited applicability as a result of such changes.

    Significant changes resulting from implementation of the Hague Agreement include the addition of Chapter 2900 (International Design Applications) and the revision of Chapter 1500 (Design Patents). In addition, Chapter 200 was revised to incorporate changes to priority and benefit claims made in the Hague Agreement implementation rulemaking. Conforming revisions were made in additional chapters.

    Significant changes resulting from implementation of the PLT include revision of Chapter 600 to reflect changes to requirements for an application filing date (including filings without drawings or claims (for non-design applications)) and to provide for reference filings; and the addition in Chapter 200 of information relating to the provisions for the restoration of priority to foreign applications and domestic benefit of provisional applications where the later-filed application is filed more than 12 months after the relied upon application but within the 2 month grace period. Conforming revisions were made in additional chapters. Throughout the MPEP, revisions were also made to eliminate material pertaining to an "unavoidable delay" basis for revival, and to indicate a two month period for reply will be set in most instances where the Office previously set a one month or 30 day period for reply.

    Chapters 800, 900, 1000, 1300, 1700, 1800, 2400, and 2500, which were not revised in the original Ninth Edition, 11.2013 (March 2014), also incorporate changes to the laws, rules, and practice necessitated by, or made as a result of, the Leahy-Smith America Invents Act (AIA), Public Law 112-29, 125 Stat. 284.

    Chapters 500, 600, 1800, and 2400 were revised to reflect current practices pertaining to EFS-Web filings. Conforming revisions were made in additional chapters.

    Chapter 900 was revised for changes necessitated by the Cooperative Patent Classification (CPC) system, a bilateral classification system jointly developed by the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). Conforming revisions were made in additional chapters.

    Chapter 2700 was revised to update the discussion of patent term adjustment (PTA) provisions in view of recent rules changes and court decisions.

    All revised chapters and Appendix R incorporate any changes necessitated by the nine patent-related final rule notices published between October 21, 2013 and May 19, 2015.

    Summary of Effective Dates
    MPEP Chapters

    Sections that have been substantively revised in this revision (published October 2015 and November 2015) have a revision indicator of [R-07.2015] meaning that the section has been updated as of July 2015.

    MPEP Appendices

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

    Appendix L (Patent Laws) and Appendix R (Patent Rules) include the laws and rules as in force effective May 19, 2015.

    Appendix T is as in force effective July 1, 2015.

    Appendix AI is as in force effective July 1, 2015.

    Robert A. Clarke

    Editor

    Manual of Patent Examining Procedure

    [top]

      

    Summary of Changes to MPEP Chapters

    [Editor Note: For MPEP chapters 1200, 1400, and 2300 (which are not substantively revised in the Ninth Edition, Revision 07.2015 of the MPEP), as a result of the publication process, the form paragraphs reproduced in these chapters have been updated and may include substantive changes. A future revision will revise sections of these chapters as necessary for consistency with the form paragraph changes.

    In addition, in MPEP § 1202, corrected "September 16, 2102" to "September 16, 2012" following the reproduction of 35 U.S.C. 6, and in MPEP § 1214.06, corrected spelling of "Notice of Abandonment." In chapter 1400, added missing title text to prior versions of 37 CFR 1.175, 1.324, and 1.78 in MPEP §§ 1414.02, 1481.02, subsection II, and 1481.03, subsection II.C, respectively, inserted inadvertently omitted form paragraph in MPEP § 1401, and deleted form paragraph 14.29.01 from MPEP § 1490.]

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

    ALL REVISED CHAPTERS:

    Editor Note: Acronyms and Short Form References

    —PLTIA: The Patent Law Treaties Implementation Act of 2012, Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012)

    —Hague Agreement: The Hague Agreement Concerning the International Registration of Industrial Designs (see also 37 CFR 1.9(l))

    —Hague Article: An Article under the Hague Agreement (see also 37 CFR 1.9(l))

    —Hague implementation rule: Changes to Implement the Hague Agreement Concerning International Registration of Industrial Designs,80 FR 17918 (April 2, 2015)

    —Hague Rule: A Regulation set forth in the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement (see also 37 CFR 1.9(m))

    —PLT: Patent Law Treaty

    —PLT Article: An Article under the PLT

    —PLT implementation rule: Changes to Implement the Patent Law Treaty,78 FR 62368 (October 21, 2013)

    —PLT Rule: A Regulation under the Patent Law Treaty

    Passim

    —For most time periods for reply previously set at one month, the time periods for reply have been revised to two months as a result of policy changes in the implementation of the PLT. See the discussions in the PLT implementation rule regarding PLT Article 11 (78 FR at 62371) and various PLT Rules concerning noncompliance notifications (id. at 62373).

    Passim

    —Replaced "Express Mail" with "Priority Mail Express®" and "date in" with "date accepted" in light of the United States Postal Service (USPS) renaming Express Mail® to Priority Mail Express® on July 28, 2013 and the final rule Renaming of Express Mail® to Priority Mail Express®,79 FR 63036 (Oct. 22, 2014) to make corresponding nomenclature changes in the patent regulations.

    Passim

    —Made minor nonsubstantive changes for consistency in style (e.g., "website" rather than "web site," "email" rather than "e-mail," removing "http://" from website addresses that include "www."), and capitalization (e.g., "Internet," "intranet," "Web," "federal") unless otherwise used in treaty, statutory, or regulatory text.

    Passim

    —Website addresses have been updated as necessary.

    Passim

    —Updated the following business unit names where necessary: Board of Patent Appeals and Interferences to Patent Trial and Appeal Board; Office of Initial Patent Examination to Office of Patent Application Processing; Office of PCT Legal Administration to International Patent Legal Administration; and Office of Patent Publication to Office of Data Management.

    Passim

    —Corrected or updated cross-references to sections within the MPEP chapters as necessary.

    Passim

    —Deleted as unnecessary Editor Notes concerning previously unrevised chapters. Revised section Editor Notes as necessary to account for the ability to file applications under 35 U.S.C. 385 (international design applications).

    [top]

      

    CHAPTER 100:

    101

    —Updated 35 U.S.C. 122(b)(2)(B)(iii) and 37 CFR 1.14 to reflect changes resulting from the PTLIA and its implementation. Clarified that official papers are accepted only at the Customer Service Window, except for certain papers that have been specifically exempted from the central delivery policy.

    102

    —Revised to update 37 CFR 1.14. Added information pertaining to access to an international design application maintained by the Office in its capacity as a designated office (37 CFR 1.1003) or as an office of indirect filing (37 CFR 1.1002).

    103

    —Revised to update 37 CFR 1.14 throughout the section.

    —In subsection I, clarified that all patent applications filed after June 30, 2003, are available in public PAIR upon publishing or patenting.

    —In subsection II, deleted "U.S. Patent" from the subsection title and added explanation that pursuant to 35 U.S.C. 390, the publication by the International Bureau of an international design application designating the United States under the Hague Agreement is deemed to be a publication under 35 U.S.C. 122(b).

    —In subsection III, added cross-reference to 37 CFR 1.14(j) for access to international design applications. Added explanation that if an abandoned application is identified in a publication of an international registration under Hague Agreement Article 10(3), access to the abandoned application is available under 37 CFR 1.14(a)(1)(iv). Also added explanation that if a publication of an international registration under Hague Agreement Article 10(3) claims the benefit of, or incorporates by reference, an unpublished pending application, a copy of the application may be provided in accordance with 37 CFR 1.14(a)(1)(v) or (vi). Form PTO/SB/68 updated.

    —In subsection V, added reference to petitions for access in derivation proceedings.

    —In subsection VI, added references to benefit claims under 35 U.S.C. 386(c) and to publication of an international registration under Hague Agreement Article 10(3). Revised to limited "35 U.S.C. 365" to "35 U.S.C. 365(c)" in the context of benefit claims.

    —In subsection VIII, added references to access to applications involved in derivation proceedings and 37 CFR 42.3. Also added cross-reference to MPEP Chapter 2300.

    104

    —Subsection III revised to indicate that petitions for access in special circumstances are filed under 37 CFR 1.14(i).

    110

    —Updated the name of the International Patent Legal Administration.

    115

    —Added explanation that international design applications filed under the Hague Agreement in the U.S. Patent and Trademark Office (USPTO) are reviewed for the purposes of issuance of a foreign filing license.

    120

    —Updated 37 CFR 5.1 and 5.3. Revised the title of subsection IV to include international design applications, and added reference to a Secrecy Order applied to an international design application.

    140

    —Updated 37 CFR 5.11, 5.12, 5.13, 5.14, and 5.15. Added references to registrations of industrial designs in the context of foreign filing licenses. Revised to indicate that either the filing receipt or other official notice will indicate if a foreign filing license is granted.

    —In subsection II, added a cross-reference to MPEP § 1002.02(b).

    [top]

      

    CHAPTER 200:

    Passim

    Updated cross-references to paragraphs of 37 CFR 1.55 and 1.78 for consistency with the reorganization of these rules resulting from the PLTIA and its implementation.

    201

    —Updated 35 U.S.C. 171 in accordance with the PLTIA.

    201.01

    —Updated 35 U.S.C. 111 in accordance with the provisions of the PLTIA. Corrected the text of pre-PLT (AIA) 35 U.S.C. 111 and added explanation that pre-AIA 35 U.S.C. 111 requirements substantially correspond to those of pre-PLT (AIA) 35 U.S.C. 111, but do not include conforming amendments with regard to the oath or declaration provisions and other miscellaneous provisions of the AIA. Updated 37 CFR 1.9 to revise paragraph (a) and add paragraphs (l)-(n) for consistency with the Hague implementation rule.

    —Subsection I revised to provide an explanation of notable changes to the filing date requirements of nonprovisional applications filed under 35 U.S.C. 111(a) as a result of the PLTIA. Subsection I also revised to indicate that for applications not filed under 35 U.S.C. 111, MPEP Chapters 1800 and 2900 provide details regarding international applications (PCT) and international design applications, respectively. Deleted paragraph directed to domestic national applications as redundant to information in the first paragraph of the subsection.

    —In subsection II, updated definition of "national application" in accordance with 37 CFR 1.9(a)(1). Deleted references to applications filed before September 16, 2012 and pre-AIA 37 CFR 1.9 because 37 CFR 1.9 as revised in the Hague implementation rule is applicable to all applications irrespective of filing date. Subsection II further revised to specify that utility and plant patent applications filed on or after December 18, 2013, without a claim, are governed by the notification practice set forth in 37 CFR 1.53(f).

    —New subsection III added to discuss international design applications designating the United States. Subsection III includes the text of 35 U.S.C. 385 and 37 CFR 1.9(a) and (l)-(n), provides an overview of Title I of the PLTIA, which implemented the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement), and provides a cross-reference to new MPEP Chapter 2900 for information regarding international design applications.

    201.02

    —Revised text for consistency with 37 CFR 1.9 as amended in the Hague implementation rule.

    201.04

    —Subsection I title revised to "Provisional Application Filed On or After December 18, 2013." Subsection I revised to update 35 U.S.C. 111 and provide an Editor Note as to its applicability, to limit reproduction of 37 CFR 1.9 to paragraph (b), and to update 37 CFR 1.53 and provide an Editor Note as to its applicability. Subsection I further revised to provide a discussion of requisite parts of a provisional application in order to be accorded a filing date for applications filed on or after December 18, 2013.

    —Subsection II title revised to "Provisional Application Filed Before December 18, 2013." Subsection II revised to reflect that 35 U.S.C. 111 and 37 CFR 1.53 as set forth therein are the (pre-PLT) versions and to add Editor Notes as to their applicability.

    —Subsection III revised to add discussion regarding the possibility of restoring a provisional application for purposes of supporting the benefit claim of a subsequent nonprovisional application or international application designating the United States in accordance with 37 CFR 1.78.

    —Subsection III further revised to provide that a request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in 37 CFR 1.17(i); the filing fee, search fee, and examination fee for a nonprovisional application and the surcharge under 37 CFR 1.16(f), if appropriate, are also required. For provisional applications filed before December 18, 2013, if the inventor's oath or declaration was not filed with the provisional application, it must be submitted with the request for conversion.

    201.06

    —Added 37 CFR 1.78(d)(2) and revised section text for consistency with the rule. Added discussion of Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008) which held that the protection afforded by 35 U.S.C. 121 only applies to divisional applications, and does not apply to continuation-in-part applications.

    —Revised to specify that divisional applications must be filed under 37 CFR 1.53(b), with the exception of design applications (but not international design applications) which may also be filed under 37 CFR 1.53(d). Further revised to indicate that a divisional application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), and added a cross-references to 37 CFR 1.78 and MPEP § 211et seq. for the conditions for receiving the benefit of the filing date of a prior application.

    —Updated form paragraph 2.01 to clarify information pertaining to divisional applications.

    201.06(c)

    Pertaining to introductory text and subsection I. In General:

    —Preceding subsection I, inserted 37 CFR 1.53(b) as revised in the Hague implementation rule, and provided Editor Notes as to the applicability of the current and pre-PLT versions of that rule. Moved reproduction of 37 CFR 1.63(b) to subsection II.

    —Subsection I revised to add that a nonprovisional international design application is not an application filed under 37 CFR 1.53(b).

    —Subsection I revised to add text explaining that the filing date for applications (excluding design applications) filed on or after December 18, 2013, is the date on which a specification, with or without claims, is received in the Office. Also added explanation that an application filed under 35 U.S.C. 111(a) after December 18, 2013, may be filed by reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and drawings of the application are replaced by the reference to the previously filed application. Added cross-reference to MPEP § 601.01(a), subsection III for additional information.

    —Deleted text pertaining to applications filed under former 37 CFR 1.60, and moved to subsection II information pertaining to applications containing a copy of an oath or declaration from a prior application.

    —For consistency with current 37 CFR 1.78, revised text to explain that a petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78(e) must be accompanied by the petition fee set forth in 37 CFR 1.17(m).

    201.06(c)

    Pertaining to subsection II. Oath/Declaration:

    —In subsection II, inserted 37 CFR 1.63(b) as revised in the Hague implementation rule, and provided Editor Notes as to the applicability of the current and pre-AIA versions of that rule.

    —Subsection II substantially rewritten to clarify the conditions under which a copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012. Information related to the content of an oath or declaration deleted and replaced with cross-references to MPEP §§ 602.05(a) and 602.05(b); information pertaining to paper processing was also deleted.

    —Added explanation that a new inventor's oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, because the inventor's oath or declaration submitted in any application filed on or after September 16, 2012, must comply with requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for such applications.

    201.06(c)

    Pertaining to subsection III. Specification and Drawings:

    —Subsection III updated to include 35 U.S.C. 386(c) among the list of ways to claim the benefit of a prior application.

    —Subsection III revised to specify that if a continuation or divisional application as filed contains subject matter that would have been new matter in the prior application, the applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part. Text further revised to limit the discussion pertaining to newly executed or supplemental oaths or declarations in continuation-in-part applications to those applications filed before September 16, 2012. Information pertaining to oaths or declarations in applications filed on or after September 16, 2012, moved to subsection II.

    —Subsection III revised to specify that any utility or plant patent application, including any continuing application, that will be published pursuant to 35 U.S.C. 122(b) should be filed under 37 CFR 1.53(b) with a specification that includes any claim(s) and drawings that the applicant would like to have published. Further revised text to clarify that the only format for a preliminary amendment to the specification (other than claims) that is usable for publication is a substitute specification.

    201.06(c)

    Pertaining to subsection IV. Incorporation by Reference:

    —In subsection IV, revised to replace instances of "continuation or divisional" with "continuing." Updated cross-references to paragraphs of 37 CFR 1.57 because the former provisions of paragraphs (a)-(f) were moved to paragraphs (b)-(h) in the PLT implementation rule.

    —Subsection IV updated to specify that for applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuation or divisional application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b). Moreover, pursuant to 37 CFR 1.57(b)(4), any amendment to an international design application pursuant to 37 CFR 1.57(b)(1) is effective only as to the United States and will only be acted upon after the international design application becomes a nonprovisional application. Added cross-reference to MPEP § 217 for more detailed information pertaining to incorporation by reference pursuant to 37 CFR 1.57(b).

    —Subsection IV.A revised to indicate that pursuant to 37 CFR 1.57(b)(3), an amendment to add inadvertently omitted material must be by way of a petition pursuant to 37 CFR 1.53(e). (Prior to the PLT implementation rule, such a petition was to be submitted under 37 CFR 1.57.)

    —Subsection IV.B revised to indicate that if an application is entitled to a filing but the Office identified omitted item(s) in a Notice of Omitted Item(s), applicant must respond to the notice by filing an appropriate amendment.

    201.06(c)

    Pertaining to subsections V - XII:

    —Subsection V title renamed to "Inventorship in a Continuing Application." Revised to replace instances of "continuation or divisional" with "continuing."

    —Subsection V.B revised to indicate that reflect "pre-AIA" 37 CFR 1.63 is applicable to applications filed prior to September 16, 2012.

    —Subsection VI.A (formerly subsection VI.1) updated to add references to 37 CFR 1.1021(d) and 35 U.S.C. 386(c).

    —Subsection VI.B (formerly subsection VI.2) renamed "Pre-AIA 37 CFR 1.47 Issues."

    —Subsection IX revised to delete reference to 37 CFR 1.171.

    —Subsection XI revised to delete reference to 37 CFR 1.63(d).

    —Subsection XII revised to specify that if the examiner determines that a continuation or divisional application as filed contains subject matter that would have been new matter in the prior application, the applicant is required to delete the benefit claim or redesignate the application as a continuation-in-part.

    201.06(d)

    Pertaining to introductory text and subsections I. CPA Practice has been Eliminated as to Utility and Plant Applications and V. Forms:

    Updated 37 CFR 1.53(d).

    —In subsection I, replaced the reference to form paragraph 8.27 with a reference to form paragraph 8.04.

    —Subsection V revised to delete reference to Form PTO/SB/29A, "For Design Applications Only: Receipt For Facsimile Transmitted CPA" and update the website address for accessing the CPA Form.

    201.06(d)

    Pertaining to subsection II. Filing and Initial Processing of CPAs for Design Applications

    —Revised to update 37 CFR 1.53(d)(1)(ii) and text throughout the subsection for consistency with the Hague implementation rule. Specifically, a continuation or divisional (but not a continuation-in-part) application may be filed under 37 CFR 1.53(d) if the prior application is a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor's oath or declaration if the CPA is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in 37 CFR 1.53(f)(3)(i) (i.e., an application data sheet indicating the name, residence, and mailing address of each inventor).

    —Subsection II.A further revised to explain that although the previously filed oath or declaration (if any) will be considered to be the oath or declaration of the CPA, for continuing applications (including CPAs) filed on or after September 16, 2012, the oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012.

    —Subsection II.E further revised to clarify that pre-AIA 37 CFR 3.73(b) is applicable to a CPA filed prior to September 16, 2012, governing the filing of assignment papers.

    —Subsection II.F revised to provide information pertaining to filing CPA requests via EFS-Web.

    —Subsection II.G revised to indicate that for CPAs filed on or after September 16, 2012, if the prior application does not contain the inventor's oath or declaration, the surcharge under 37 CFR 1.16(f) is required (unless the inventor's oath or declaration is being filed with the CPA).

    —Subsection II.K revised to delete reference to the handling of paper application files.

    201.06(d)

    Pertaining to subsection III. Examination of CPAs:

    —Subsection III.A revised to indicate that where the non-continued prosecution application originally assigned an application number itself claims the benefit of a prior application or applications under 35 U.S.C. 120, 121, or 386(c), 37 CFR 1.78(d)(2) continues to require that the non-continued prosecution application originally assigned the application number contain a reference to any such prior application(s).

    —Subsection III.A revised to indicate that where an applicant in an application filed under 37 CFR 1.53(b) seeks to claim the benefit of a CPA under 35 U.S.C. 120 or 121 (as a continuation, divisional, or continuation-in-part), 37 CFR 1.78(d)(2) requires a reference to the CPA by application number in an application data sheet or, for applications filed before September 16, 2012, in the first sentence of the specification. Revised to clarify that 37 CFR 1.78(d)(4) provides that "[t]he identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number."

    —Subsection III.C revised to clarify that an election in reply to a restriction requirement made in the prior application carries over to the CPA under certain conditions.

    201.07

    —Added 37 CFR 1.78(d)(2) and revised section text for consistency with the rule.

    —Revised to specify that continuation applications must be filed under 37 CFR 1.53(b), with the exception of design applications (but not international design applications) which may also be filed under 37 CFR 1.53(d). Further revised to indicate that a divisional application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), and added a cross-references to 37 CFR 1.78 and MPEP § 211et seq. for the conditions for receiving the benefit of the filing date of a prior application.

    —Revised to replace reference to the "applicant" with "inventorship" consistent with the AIA. Revised to emphasize that a continuation must not include anything that would constitute new matter if inserted in the original application.

    —Revised to clarify that the Office, not the primary examiner, will establish the right to further examination when new claim sets are filed in a continuation before the termination of proceedings in an earlier nonprovisional application.

    —Revised to indicate that a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior nonprovisional application is a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor's oath or declaration if the CPA is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor.

    201.08

    —Revised to indicate that benefit may additionally be claimed under 35 U.S.C. 386(c), and to delete parenthetical reference to pre-AIA 35 U.S.C. 112, first paragraph.

    202

    —Subsection I revised to delete "substitute" from the list of applications that may claim benefit to a prior application. Revised to clarify that the identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.

    —Subsection I revised to indicate that if benefit claim information is incorrect due to applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate. Further revised to indicate that a petition for an unintentionally delayed benefit claim may also be required.

    —Subsection II revised to add that a petition for an unintentionally delayed claim for priority may also be required in instances where the oath or declaration or the application data sheet is erroneous with regard to foreign priority claims.

    202.01 - 202.04

    —Deleted.

    203.04

    —Revised to indicate that an application's status as an "allowed" application continues from the date of the notice of allowance until it issues as a patent, is withdrawn from issue in accordance with 37 CFR 1.313, or becomes abandoned for failure to pay the issue fee and any required publication fee.

    203.08

    —Subsection I revised to update website address for the Patent Application Information Retrieval (PAIR) system.

    210

    —Revised to add reference to benefit and priority claims under 35 U.S.C. 386. Revised to indicate that title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules.

    —Subsection I revised to indicate that it presents an overview of the substantive changes to 37 CFR 1.78 resulting from implementation of the AIA and the PLTIA. Revised to reflect that benefit of an earlier-filed application may be under 35 U.S.C. 365(c), or 386(c). Subsection I title and text revised to replace "domestic" with "national."

    —Subsection I updated to explain that in implementing the PLTIA, the Office reorganized and revised 37 CFR 1.78 effective May 13, 2015. All versions of 37 CFR 1.78 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.78, for which a summary of the provisions is provided. Updated to reflect that 37 CFR 1.78(a)(6) and (d)(6) set forth provisions that are only applicable to nonprovisional applications filed on or after March 16, 2013 that claim the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013.

    —Subsection II updated to explain that implementation of the PLTIA impacted priority claims and 37 CFR 1.55.

    —Subsection II revised to delete the limited applicability of 35 U.S.C. 365(a) and (b) based on filing date. Revised to indicate that for all applications filed on or after September 16, 2012, a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) to the prior application must be presented in the application data sheet. Revised to explain that in implementing the PLTIA, the Office reorganized and revised 37 CFR 1.55 effective May 13, 2015. All versions of 37 CFR 1.55 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.55, for which a summary of the provisions is provided.

    —Subsection III revised to indicate that Title I of the PLTIA amended the definition of effective filing date in 35 U.S.C. 100(i) to provide for priority claims under 35 U.S.C. 386(a) or (b) and benefit claims under 35 U.S.C. 386(c). Further revised to indicate that in implementing the first inventor to file provision of the AIA, the Office added a statement requirement to 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6) for transition applications. The requirement for a statement under these provisions does not apply to nonprovisional international design applications.

    211

    —Revised to update 35 U.S.C. 119(e) and 120 for consistency with the PLTIA. Updated 37 CFR 1.78 in accordance with the Hague implementation rule and added references to benefit claims under 35 U.S.C. 386(c). Revised to note that nonprovisional international design applications are excluded from the statement requirement under 37 CFR 1.78(a)(6) and (d)(6).

    211.01

    —Subsection I revised to note that if the prior-filed application is an international design application designating the United States, the prior-filed application must be entitled to a filing date in accordance with 37 CFR 1.1023.

    —Subsection I further revised to delete the parenthetical regarding the time period under 37 CFR 1.53(g) and to add a cross-reference to 37 CFR 1.78(a)(2). Updated form paragraph 2.40.

    —Subsection III revised to indicate that nonprovisional international design applications are excluded from the transition provisions of 37 CFR 1.78(a)(6) and (d)(6).

    211.01(a)

    —Revised to add new subsection heading "I. In General" to previous text. Subsection I revised to include discussion of restoration of benefits in accordance with the PLTIA and to add applicable cross-references for additional information.

    —Subsection I further revised to explain that as an alternative to claiming benefit to a provisional application that was filed in a language other than English, applicant may delete the benefit claim to the provisional application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification, as appropriate.

    —Added to subsection I a discussion of restoration of priority benefit when a later-filed application is claiming the benefit of a provisional application via an intermediate copending application, and an indication that design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e).

    —Added new subsection "II. Restoring the Benefit of a Provisional Application." Subsection II explains that effective December 18, 2013, title II of the PLTIA provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e).

    —Subsection II further explains that as a result of the implementation of title I of the PLTIA, 37 CFR 1.78(a) and (b) were amended effective May 13, 2015, to provide that a petition to restore the right of priority filed on or after May 13, 2015, must be filed in the subsequent application and that the subsequent application is the application required to be filed within the period set forth in 37 CFR 1.78(a)(1)(i).

    —Subsection II discusses the requirements for filing a petition under 37 CFR 1.78(b). Added form paragraph 2.11.01, relocated from MPEP § 211.01(b), subsection I.

    211.01(b)

    —Subsection I revised to add 35 U.S.C. 386(c) among the laws under which a later-filed application may claim the benefit of a prior-filed nonprovisional application.

    —Subsection I revised to add reference to MOAEC, Inc. v. MusicIP Corp., 568 F. Supp. 2d 978 (W.D. Wis. 2008) wherein the district court interpreted "before" to mean "not later than" and allowed a continuation application filed the same day that the parent patent issued to have the benefit of the filing date of the parent application, followed by "But see Immersion Corp. v. HTC Corp.,Civil Action No. 12-259-RGA (D.Del. Feb. 11, 2015)."

    —In subsection I, updated form paragraph 2.11; form paragraph 2.11.01 deleted and relocated to MPEP § 211.01(a), subsection II.

    —Subsection II revised to indicate that a nonprovisional application that directly claims the benefit of a provisional application under 35 U.S.C. 119(e) must be filed within 12 months from the filing date of the provisional application, unless the benefit of the provisional application has been restored (in which case the nonprovisional application must be filed within 14 months). Added cross-references to 37 CFR 1.78(b) and MPEP § 211.01(a), subsection II.

    211.01(c)

    —Revised quotation of 35 U.S.C. 371(d) in accordance with amendments made in the PLTIA.

    211.01(d)

    —New section added directed to claiming the benefit of an international design application designating the United States.

    211.02

    —Subsection I revised to indicate Office preference for the use of an application data sheet, rather than making specific reference to a prior application in the first sentence(s) of the specification for applications filed prior to September 16, 2012.

    —Subsection I revised to incorporate discussion of international design applications designating the United States. Revised to update cross-references to paragraphs of 37 CFR 1.57.

    —Subsection I revised to replace instances of "surcharge" with "petition fee," and to replace 37 CFR 1.17(t) with 37 CFR 1.17(m). Updated form paragraph 2.15.

    —Subsection II revised to indicate that except for benefit claims to the prior application in a continued prosecution application (CPA), benefit claims under 35 U.S.C. 120, 121, 365(c), and 386(c) must identify the prior application by application number, by international application number and international filing date, or by international registration number and international filing date under 37 CFR 1.1023, and indicate the relationship between the applications. Further revised to add specific instructions for international design applications regarding reference to prior nonprovisional applications, and to indicate that a request for a CPA is not available for international design applications.

    —Subsection III revised to add cross-reference to MPEP § 2920.05(e) for benefit information specific to international design applications.

    211.02(a)

    —Revised to replace instances of "surcharge" with "petition fee" and to delete a reference to printing the PALM bib-data sheet.

    211.03

    —Revised to update description of 37 CFR 1.78 to include international applications and international design applications.

    —Updated to state that if the application is a utility or plant application filed under 35 U.S.C. 111(a), the benefit claim of the prior application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) must be made during the pendency of the application and within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. Updated the guidance regarding making a benefit claim for nonprovisional application entering the national stage from an international application under 35 U.S.C. 371.

    —Revised to add that if the application is a design application, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be submitted during the pendency of the later-filed application.

    —Revised to replace "surcharge" with "petition fee" and to replace 37 CFR 1.17(t) with 37 CFR 1.17(m).

    —Updated form paragraph 2.39.

    211.04

    —Revised to replace of "surcharge" with "petition fee" and to replace 37 CFR 1.17(t) with 37 CFR 1.17(m). Revised to update all cross-references to 37 CFR 1.78 in accordance with the Hague implementation rule.

    —Revised to add that effective May 13, 2015, 37 CFR 1.78(d)(3) was amended to make the procedures under 37 CFR 1.78(e) to accept an unintentionally delayed benefit claim applicable to design applications where the benefit claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.78(e) may be filed along with a request for certificate of correction after patent grant.

    —Revised to delete that the petition for an unintentionally delayed benefit claim must be submitted during the pendency of the nonprovisional application. Revised to add that if a petition under 37 CFR 1.78(c) or (e) is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then the petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as having been filed in the international application. Revised to add cross-reference to 37 CFR 1.78(i).

    211.05

    —Revised to emphasize that a continuation application must not include anything which would constitute new matter if inserted in the original application. Updated form paragraphs.

    213

    —Updated 35 U.S.C. 119 and 37 CFR 1.55 in accordance with the PLTIA and the Hague implementation rule, and revised text for consistency therewith. Revised to add references to restoration of the right of priority and to priority claims in nonprovisional international design applications.

    —Updated form paragraph 2.18, and deleted final paragraph of section as no longer necessary.

    213.01

    —In the introductory text, deleted reference to "another treaty between the United States and some Latin American countries" and deleted paragraphs specific to Taiwan and Thailand.

    —In subsection I, updated the table of states with respect to which the right of priority under 35 U.S.C. 119(a)-(d) has been recognized based on their status as party to the PCT or Paris Convention or as members of the WTO. Added website address for accessing the most current version of the table.

    —Subsection II revised to update 35 U.S.C. 365 in accordance with PLTIA.

    —Added new subsection III. Right of Priority Based Upon an International Design Application to provide an overview of the subject and a cross-reference to newly-added MPEP § 2920.05(d) for additional information. Former subsection III redesignated as subsection IV.

    —Subsection IV (formerly subsection III) revised to explain that under the Paris Convention, the right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design. Corrected title of "The Hague Agreement Concerning the International Registration of Industrial Designs."

    213.02

    —Subsection I revised to add discussion of formal requirements relating to claiming foreign priority in international applications entering the national stage under 35 U.S.C. 371 and international design applications designating the United States.

    —Subsection I revised to specify that for applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, the claim for priority must be presented in an application data sheet, and that for applications filed prior to September 16, 2012, the claim for priority must appear in the oath or declaration under 37 CFR 1.63.

    —Subsection I further revised to add a cross-reference to 37 CFR 1.57(a) and MPEP § 601.01(a), subsection III, regarding filing by reference to a previously filed application. Updated cross-references to paragraphs of 37 CFR 1.57.

    —Subsection III revised to change cross-reference of 37 CFR 1.55(j) to 37 CFR 1.55(k) and to explain that nonprovisional international design applications are excluded from the transition provision of 37 CFR 1.55(k), as such applications can only be filed on or after May 13, 2015.

    213.03

    —Introductory text revised to include a discussion of restoration of priority and to include a discussion of Hague Agreement Rule 4(4) relating to the last day for taking an action or paying a fee.

    —In subsection II, revised the date in provided example so that it would not be impacted by restoration of the right of priority.

    —Add new subsection III. Restoring the Right of Priority to explain that the PLTIA provides for restoration of the right of priority under certain conditions, and to explain the requirements of a petition 37 CFR 1.55(c) for such restoration.

    213.04

    —Section rewritten in its entirety to update 37 CFR 1.55(g) and the requirements for filing a proper priority claim and certified copy of the foreign application.

    213.05

    —Revised to update cross-references to paragraphs of 37 CFR 1.55.

    213.06

    —Revised to update 37 CFR 1.55 and cross-references to paragraphs of 37 CFR 1.55, and to add PCT Rule 4.10 Priority Claim. Further revised to indicate that there are limited exceptions to the time limits set forth in the PCT and the Regulations under the PCT regarding priority claims and filing the certified copy of the foreign application, and added cross-references to MPEP §§ 214.02 and 215.02.

    213.07

    —New section added to discuss of provisions for claiming priority and filing a certified copy in a nonprovisional international design application in accordance with the Hague Agreement.

    214

    —Updated to indicate that implementation of the PLTIA resulted in changes to the procedural requirements relating to claims for priority to an earlier-filed foreign application and to the submission of a certified copy of the priority document as set forth in 37 CFR 1.55.

    —Revised to add a parenthetical distinguishing between the time period for filing a claim for foreign priority in design patents from utility patents.

    —Revised to indicate that where the requirements for perfecting priority under 35 U.S.C. 119(a)-(d) or (f) have not been met before the issuance of patent, 37 CFR 1.55(g) and MPEP § 216.01 should be consulted for an explanation of when the deficiencies are correctable by a certificate of correction or reissue. Deleted discussion of Brenner v. State of Israel.

    214.01

    —Revised to delete 37 CFR 1.55(c). Updated 37 CFR 1.55(d) and added discussion of its provisions. Updated cross-references to paragraphs of 37 CFR 1.55.

    —Revised to add discussion of priority claims in design applications, and to explain that a claim for priority may be made at any time during the pendency of the application. Added cross-reference to MPEP §§ 1504.10 and 2920.05(d) added for additional information pertaining to priority claims in design applications.

    —Revised to limit discussion of priority claims in an application data sheet to applications filed under 35 U.S.C. 111(a).

    214.02

    —Updated 37 CFR 1.55(e) and related discussion with respect to unintentionally delayed priority claims in accordance with the Hague implementation rule. Added explanation that 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application).

    —Revised to indicate that prior to May 13, 2015, there were no procedures for accepting an unintentionally delayed priority claim in a design application, but that effective May 13, 2015, such procedures were established. Added cross-reference to MPEP § 216.01.

    214.03

    —Updated form paragraphs for consistency with 37 CFR 1.55.

    —In subsection III, revised to include caveat regarding priority not having been restored under PCT Rule 26bis.3 or 37 CFR 1.55(c). Form paragraph 2.23 revised to include information pertaining to petitions under 37 CFR 1.55(c) to restore the right of priority.

    —Subsection V revised to update the protocol to follow when the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent and to add cross-reference to MPEP § 216.01.

    214.04

    —Revised to correct cross-reference from MPEP § 215.01(a) to MPEP § 215.01.

    215

    —Subsection I revised to indicate that an application data sheet may be used for applications filed prior to September 16, 2012 to identify the certified copy of the foreign priority application.

    —Subsection III revised to insert 37 CFR 1.55(h) and update form paragraph 2.20.

    —Subsection IV revised to update procedures for correcting the priority claim when the foreign priority document does not correspond with the application identified in the priority claim and for adding a priority claim when the priority claim is presented after the time period set forth in 37 CFR 1.55. Updated form paragraph 2.22.

    —Subsection V revised to update the protocol to follow when the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, and to add cross-reference to MPEP § 216.01.

    215.01

    —Updated website address for information concerning the priority document exchange program and corrected the reference to 37 CFR 1.323.

    215.02

    —Updated 37 CFR 1.55(f) and the discussion thereof in accordance with Hague implementation rule. In particular, text revised to indicate that the time period set forth in 37 CFR 1.55(f)(1) only applies to applications filed under 35 U.S.C. 111(a) on or after March 16,2013, and to indicate that 37 CFR 1.55(f)(2) sets forth the time period for filing a certified copy of the foreign application for international applications entering the national stage under 35 U.S.C. 371.

    —Revised to explain that the time period requirement in 37 CFR 1.55(f)(1) or (f)(2) does not apply in three circumstances, namely those set forth in 37 CFR 1.55(h)(certified copy filed in parent or related application), 37 CFR 1.55(i)(foreign intellectual property priority document exchange participant), or (j)(interim copy of foreign application filed).

    215.02(a)

    —Updated 37 CFR 1.55(i)(formerly 37 CFR 1.55(h)) and cross-references to paragraphs of 37 CFR 1.55. Revised description of timeliness requirement to indicate that the time period is set forth in 37 CFR 1.55(g)(1).

    215.02(b)

    —Updated 37 CFR 1.55(j)(formerly 37 CFR 1.55(i)) and cross-references to paragraphs of 37 CFR 1.55. Added indication of the time period for providing an interim copy of the foreign application in an application entering the national stage under 35 U.S.C. 371. Revised to indicate that a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. Revised document description to be used when filing interim copies via EFS-Web.

    215.03

    —Replaced paragraphs of 37 CFR 1.55 previously reproduced herein with 37 CFR 1.55(g), and revised text for consistency with the provisions of 37 CFR 1.55(g) as amended in the Hague implementation rule. Deleted references to a processing fee under 37 CFR 1.17(i), and added brief discussion of petitions under 37 CFR 1.55(e), (f), or (g).

    216

    —Revised to indicate that an application data sheet may be used for applications filed prior to September 16, 2012 to identify the foreign application to which priority is claimed. Revised to indicate that for original applications filed under 35 U.S.C.111(a) and international applications, entering the national stage under 35 U.S.C. 371, the examiner should ensure that the claim for foreign priority is timely. Updated form paragraph 2.19.

    —Revised discussion specific to applications filed before September 16, 2012, for consistency with 37 CFR 1.55(n). Revised text to clarify that if the nonprovisional application and the certified copy of the foreign application do not name the same inventor or do not have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved.

    —Revised to clarify circumstances under which a United Kingdom "complete specification" is treated as a different application than the United Kingdom "provisional specification."

    216.01

    —Section title revised to "Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent."

    —Revised to update 35 U.S.C. 119(b) and add 37 CFR 1.55(e)-(g) pertaining to delayed priority claims and delayed submission of the certified copy of the priority document. Added text explaining that the failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 , provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.

    —Moved discussion of Brenner v. State of Israel to subsection II and discussion of In re Van Esdonk to subsection I.

    —Added subsection I. Perfecting Priority Claim Via Certificate of Correction to explain that 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority, and to provide specific examples pertaining to 37 CFR 1.55(e) - (g) and 37 CFR 1.55(h).

    —Added subsection II. Perfecting Priority Claim Via Reissue to explain that in circumstances where a claim to foreign priority benefits cannot be perfected via a certificate of correction because the requirements of 35 U.S.C. 119(a) - (d) or (f) had not been satisfied in the patented application, or its parent, prior to issuance, and the requirements of 37 CFR 1.55 are not met, the claim to foreign priority benefits can be perfected only by way of a reissue application.

    217

    —Revised to update 37 CFR 1.57(b)(formerly 37 CFR 1.57(a)) and to update cross-references to paragraphs of 37 CFR 1.57.

    —Subsection I revised to indicate that the provisions of 37 CFR 1.57(b) are applicable to inadvertently omitted from an application that claims priority to, or the benefit, a prior-filed provisional, nonprovisional, international, or international design application.

    —Revised subsection II.F to indicate that pursuant to 37 CFR 1.57(b)(3), an amendment to add inadvertently omitted material must be by way of a petition pursuant to 37 CFR 1.53(e). Added subsection II.H directed to amendments to an international design application pursuant to 37 CFR 1.57(b)(1).

    —In subsection III, Example 3, replaced "the effective date of 37 CFR 1.57(a)" with "September 21, 2004" for clarification.

    —In subsection IV, updated form paragraph 6.19.02.

    [top]

      

    CHAPTER 300:

    301

    —Updated 35 U.S.C. 261 to reflect revisions made in the PLT.

    —Updated 37 CFR 3.1 for consistency with the Hague implementation rule, adding international design applications designating the U.S. to the definition of "application" for the purposes of 37 CFR Part 3.

    —Revised the last paragraph of the section to add applications filed under 35 U.S.C. 385 to the list of applications wherein an assignment may contain the statements required to be made in an oath or declaration.

    302

    —Updated 37 CFR 3.11 and the corresponding text in the section to specify that "other documents" that may be recorded at the discretion of the Director are documents "relating to interests in patent applications and patents."

    —Revised the second paragraph of the section by deleting the reference to the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act).

    302.03

    —Updated 37 CFR 3.21 for consistency with the Hague implementation rule adding the manner in which an international design application must be identified in an assignment.

    302.07

    —Updated 37 CFR 3.31(h) for consistency with the PLT implementation rule, which provides that the assignment cover sheet required by 37 CFR 3.28 will be satisfied by certain Patent Law Treaty model forms.

    302.10

    —Updated 37 CFR 1.4 for consistency with the PLT implementation rule, which specifies how electronically submitted correspondence must be signed and the certifications made by submission of signed correspondence.

    306

    —Revised last paragraph by adding an exception to when substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, i.e., if the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

    306.01

    —Revised to add that the recordation of a new assignment is not required in an application that both claims the benefit of a provisional application and adds matter not in common with the provisional application if the application claiming the benefit is filed on or after September 16, 2012, and the assignee is the original applicant therein.

    308

    —Updated 37 CFR 1.46 for consistency with the Hague implementation rule.

    —Revised Editor Note in 37 CFR 1.46 to include a reference to 35 U.S.C. 385 and a reference to "pre-Hague" 37 CFR 1.46.

    309

    —Revised to add cross-reference to MPEP § 1701 for additional restrictions on Office employees.

    310

    —Revised last paragraph to change the references to "prior copending" or "earlier" applications to "related" applications. Deleted cross-references to 37 CFR 1.78(a) and MPEP § 211 et seq. and specified the relevant paragraph of 37 CFR 1.77, i.e. 37 CFR 1.77(b)(1) - (3).

    313

    —Revised title by deleting first occurrence of "Other."

    —Revised text for consistency with 35 U.S.C. 261 and 37 CFR 3.11. Revised to replace the specific indication of where documents will be recorded (i.e., the Assignment Division) with "the Office."

    —Further revised to specify that in addition to documents that constitute a transfer or change of title, other documents relating to interests in patents or applications will generally be recorded. Added explanation that documents not accepted for recording include attorney's liens against patents or patent applications, citing to In re Refusal of Assignment Branch to Record Attorney's Lien, 8 USPQ2d 1446 (Comm'r Pat. 1988). Revised third paragraph, second sentence, by changing "Office" to "purported assignee" to correct an error.

    317.02

    —Added cross-references to MPEP § 512 and MPEP § 513.

    323.01(c)

    —Revised by deleting "due to a typographical error" in first sentence of first paragraph because the discovery of an improperly recorded assignment or name change is not limited to typographical errors.

    323.01(d)

    —Revised to clarify by adding the explanation that petitions to correct, modify, or expunge an assignment record "will not result in the removal of a document from the assignment records." Further revised by adding an indication that assignment records are recognized as distinct from application file records.

    —Added the following explanation at the end of the section: "A redacted version of the 'expunged' document must be recorded and will appear in the assignment records instead of the 'expunged' document upon the granting of the petition. An additional assignment of the 'correct' document may be recorded in addition to the redacted version where the redacted version is incomplete or the original document was not correct."

    324

    —Revised Editor Notes under (pre-AIA) 37 CFR 3.71 and pre-AIA 37 CFR 3.73 to include references to 35 U.S.C. 385. In subsection VII, changed "37 CFR 1.131" to "37 CFR 1.131(a)."

    325

    —Revised Editor Notes under 37 CFR 3.71 and 37 CFR 3.73 to include references to 35 U.S.C. 385. Revised "37 CFR 1.46(c)" to read "37 CFR 1.46(c)(2)" throughout section. Revised third paragraph to indicate that the owner or assignee "can consent" (rather than "consents") to the filing of a reissue application. In subsection VII, changed "37 CFR 1.131" to "37 CFR 1.131(a)."

    [top]

      

    CHAPTER 400:

    402

    —In subsection I, added cross-reference to MPEP § 601.03(a) explaining change of correspondence address in applications filed on or after September 16, 2012, and MPEP § 601.03(b) for change of correspondence address in applications filed before September 16, 2012.

    402.01

    —Added cross-references to MPEP § 1807 for representation in international applications (PCT) and MPEP § 2911 for representation in international design applications.

    402.02(a)

    —Updated 37 CFR 1.32. In subsection II, added reference to 35 U.S.C. 386(c) in the context of powers of attorney in prior national applications to which benefit is claimed.

    —In subsection III, deleted information pertaining to applications filed before September 16, 2012, and added a link to forms available on the USPTO website.

    402.02(b)

    —In subsection III, deleted information pertaining to applications filed on or after September 16, 2012, and added reference to forms PTO/SB/80 and PTO/SB/81.

    402.03

    —Updated 37 CFR 11.18.

    402.06

    —Deleted form PTO/SB/83 and replaced with form PTO/AIA/83.

    402.07

    —Updated Form PTO/SB/80.

    403.01(a)

    —Updated 37 CFR 1.33.

    405

    —Updated Form PTO/SB/84.

    408

    —Revised section title to read "Interviews With Patent Practitioner of Record." Revised text to indicate an examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 502.03) to suggest a telephonic, personal, or video conference interview.

    —Replaced indication that a patent practitioner not of record should not be given information relative to the application by telephone with a cross-reference to MPEP §§ 101 -104 for information regarding access to application information by persons other than a patent practitioner of record.

    —Deleted reference to practitioners having offices or representatives in the Washington area.

    409.03(d)

    —At the end of subsection II, added cross-reference to MPEP § 1702.

    409.05

    —Updated 37 CFR 1.46.

    410

    —Updated 37 CFR 1.4. Provided additional guidance on certifications before the Office consistent with 37 CFR 1.4(d)(4) and (5) and 37 CFR 11.18(b). Revised to change cross-reference from 37 CFR 1.137(b) to 37 CFR 1.137(a) because the unintentional delay standard has been relocated to 37 CFR 1.137(a).

    [top]

      

    CHAPTER 500:

    501

    —Updated 37 CFR 1.1 and 1.4. Revised subsection I to include reference to requests for supplemental examination.

    502

    —Updated 37 CFR 1.5 and 1.6. Revised to indicate that papers filed in association with a supplemental examination proceeding should identify the patent number and the supplement examination request control number.

    502.01

    —Updated 37 CFR 1.6. Revised to indicate that correspondence in international design applications and requests for supplemental examination may not be submitted via facsimile.

    502.02

    —Updated 37 CFR 1.4. Revised to indicate that a graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) or S-signatures as provided for in 37 CFR 1.4(d)(2) will be accepted when submitted via the Office electronic filing system.

    502.03

    —Revised to incorporate changes associated with Change to Internet Usage Policy to Permit Oral Authorization for Video Conferencing Tools by Patent Examiners,80 FR 23787 (April 29, 2015).

    502.05

    —Section rewritten in its entirety to parallel the organizational structure of the April 2011 Legal Framework for EFS-Web (available at www.uspto.gov/patents-application-process/applying-online/legal-framework-efs-web-06april11), and to reflect the current abilities and requirements of the Office Electronic Filing System (EFS-Web).

    —Subsection I is directed to the Legal Framework for EFS-Web, and subsection II provides additional information. Subsections I.A – I.G correspond to sections A – G of the April 2011 Legal Framework; subsections I.H – I.N reorganize sections H – J of the April 2011 Legal Framework and add additional information.

    Subsection II references the USPTO website for additional information on EFS-Web and PAIR.

    502.05

    Pertaining to subsection I, following is a summary of the major differences between MPEP § 502.05, subsection I and the April 2011 Legal Framework.

    —I.A. General Information on EFS-Web - revised to provide updated general information on web-based documents such as ePetitions and eTerminal Disclaimers submitted via EFS-Web.

    —I.B. Legal and Document Policies - revised to update the listing of applications and documents that are permitted to be filed via EFS-Web to provide for international design applications, supplemental examination requests, third-party preissuance submissions, citation of prior art and written statements in patent files, and web-based documents such as ePetitions and eTerminal Disclaimers. Clarified that registered users may not file follow-on documents in applications, reexamination proceedings, or supplemental examination proceedings, unless the practitioner is of record or acting in a representative capacity. Added listing of papers which may be filed and processed electronically by registered users, including: request for withdrawal as attorney or agent; ePetition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(b); Petition to withdraw an application from issue under 37 CFR 1.313; Petition for revival of an application under 37 CFR 1.137; eTerminal Disclaimers for nonprovisional utility applications under 37 CFR 1.321; and Petition to correct assignee after payment of Issue Fee under 37 CFR 3.81(b).

    —I.C. Electronic Acknowledgement Receipt and Date of Receipt - revised to clarify that the EFS-Web system records as the date of receipt of documents the local time and date in Alexandria, Virginia.

    —I.D. Proper Usage of EFS-Web - revised to clarify that providing an incorrect application number and confirmation number when filing a follow on document will result in the follow on document being entered in the wrong application.

    —I. E. Security and Authentication - revised to clarify that a Public Key Infrastructure (PKI) certificate holder has thirty (30) days to update changes to information in the certificate of action form and may only use his or her certificate to attempt to access applications which the certificate holder is authorized to access.

    —I.F. Signature Policy - revised to reflect changes to 37 CFR 1.4(d)(3) which permit the use of a graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) or of an S-signature as provided for in 37 CFR 1.4(d)(2).

    —I.G. Submission of Pre-Grant (Eighteen-Month) Publication Requests via EFS-Web - revised to update form numbers.

    —I.H. Submission of Supplemental Examination Requests via EFS-Web – subsection added to provide that supplemental examination requests may be submitted via EFS-Web. Information in April 2011 Legal Framework section H moved to subsection I.K.

    —I.I. Filing of Third-party Preissuance Submissions and Citation of Prior Art and Written Statements in Patent Files Filed via EFS-Web – new subsection added to provide that third-party preissuance submissions and citation of prior art and written statements in patent files may be submitted via EFS-Web. Information in April 2011 Legal Framework section I moved to subsections I.K and I.L.

    —I.J. Submission of Interim Copies of Foreign Priority Documents via EFS-Web – new subsection added to provide that interim copies of foreign priority documents may be submitted via EFS-Web. Information in April 2011 Legal Framework section J moved to subsection I.M.

    —I.K. Submission of Photographs and Drawings via EFS-Web – subsection I.K includes information in April 2011 Legal Framework section I pertaining to the submission of drawings and photographs via EFS-Web and further revised to provide for international design applications, supplemental examination proceeding and to clarify that a petition under 37 CFR 1.84 to accept color drawings does not apply to design applications.

    —I.L. Text Files and File Limits – subsection I.L includes information in April 2011 Legal Framework section I pertaining to the submission of text files and file limits via EFS-Web and is further revised to address file limits for international design applications.

    —I.M. International Applications (PCT) and Associated Documents – subsection I.M includes information in April 2011 Legal Framework section J pertaining to the submission of international applications (PCT) and documents therefor via EFS-Web and is further revised to indicate that color drawings are not permitted in PCT international applications.

    —I.N. International Design Applications and Associated Documents – new subsection added to include information concerning the filing of international design applications and associated documents via EFS-Web.

    503

    —Updated 37 CFR 1.54. Revised to indicate that the Office includes the application's confirmation number on the cover sheet accompanying Office actions and on filing receipts. Also revised to indicate a nonprovisional application filed on or after December 18, 2013 may receive a filing date when filed with or without claims.

    505

    —Updated 37 CFR 1.6.

    506

    —Updated 37 CFR 1.53. Revised to distinguish between the statutory requirements for a nonprovisional utility application and a design application to have a filing date granted. Revised to update information concerning the processing of incomplete applications.

    506.02

    —Revised to distinguish between the requirements associated with the accordance of a filing date for nonprovisional utility and design applications.

    507

    —Replaced 37 CFR 1.52(d)(1) with 37 CFR 1.52(d).

    508

    —Revised to indicate that applications are scanned and loaded into the Image File Wrapper system upon filing.

    508.04

    —Removed reference to patent lapses.

    509

    —Updated 37 CFR 1.23.

    509.01

    —Updated 37 CFR 1.25. Added explanation that fees in an international design application may be charged to a deposit account.

    509.02

    —Revised to indicate that, once small entity status is established, fee payments may be made without regard to change in status until the payment of the issue fee is due or a maintenance fee is due.

    509.03

    —Updated 37 CFR 1.27 and 1.4. Removed reference to former versions of USPTO forms being acceptable. Revised subsection IV to include circumstances in which payment of the individual designation fee in an international design application would qualify as an assertion of small entity status.

    509.04

    —Revised to indicate that a micro entity fee may be available in ex parte reexamination proceedings filed under 37 CFR 1.510 only when the request is filed by the patent owner.

    509.04(f)

    —Updated 37 CFR 1.29.

    510

    —Revised to add reference to the USPTO access control procedures which may affect visitors to the USPTO campus.

    511

    —Updated 37 CFR 1.10; removed reference to former Express Mail service of the USPS.

    512

    —Updated 37 CFR 1.8. Removed reference to paper processing instructions.

    513

    —Removed references to prior Express Mail service from the USPS. Updated 37 CFR 1.6 and 1.10. Removed reference to Nitto Chemical Industry. Co., Ltd. v. Comer, 39 USPQ2d 1778 (D.D.C. 1994).

    [top]

      

    CHAPTER 600:

    Passim

    —Removed alternative citations to pre-AIA 35 U.S.C. 112, except in form paragraph text.

    —Updated cross-references to paragraphs of 37 CFR 1.57 because the former provisions of paragraphs (a) - (f) were moved to paragraphs (b) - (h) in the PLT implementation rule, and new paragraph (a) pertaining to reference filing was added.

    —Deleted or modified the discussion of filing a petition under 37 CFR 1.57(a)(3) for consistency with the PLT implementation rule; pursuant to 37 CFR 1.57(b)(3), an amendment to add inadvertently omitted subject matter from a priority or benefit application must be by way of a petition pursuant to 37 CFR 1.53(e) accompanied by the fee set forth in 37 CFR 1.17(f).

    Updated all forms.

    601

    —Added current 35 U.S.C. 111 as amended by the PLTIA. Designated the version of 35 U.S.C. 111 in effect prior to the PLTIA as "pre-PLT (AIA)" and added an Editor Note to state its applicability to applications filed on or after September 16, 2012 but prior to December 18, 2013. Also added explanation that the pre-AIA 35 U.S.C. 111 requirements substantially correspond to those of pre-PLT (AIA) 35 U.S.C. 111, but do not include conforming amendments with regard to the oath or declaration provisions and other miscellaneous provisions of the AIA.

    —Updated 37 CFR 1.51.

    —In subsection I, in the first paragraph, added "which is governed by 37 CFR 1.41" after "naming of the inventors" for clarification.

    —In subsection II, in the first paragraph, in light of the changes to 35 U.S.C. 111(a), clarified that an application filed under 35 U.S.C. 111(a) requires claims before examination.

    —In subsection III, added or updated cross-references to portions of the MPEP that discuss continuation applications, commencement and entry into national stage of international applications, international design applications, and supplemental examination.

    601.01

    —Added current 37 CFR 1.53 as amended in the PLT implementation rule. Designated the version of 37 CFR 1.53 in effect prior to the PLTIA as "pre-PLT (AIA)," added an Editor Note to state its applicability to applications filed prior to December 18, 2013. Also added an Editor Note to pre-AIA 37 CFR 1.53 to discuss the applicability of certain paragraphs to applications filed before September 16, 2012.

    —Modified text to explain that the filing date requirements for applications, other than design applications, filed on or after December 18, 2013 have changed in that claims and drawings are no longer required to receive a filing date.

    601.01(a)

    Pertaining to subsection I. Application Filing Requirements:

    —In subsection I, added text to explain the filing date requirements for nonprovisional applications filed on or after December 18, 2013. For example, except for design applications, the filing date of an application under 35 U.S.C. 111(a) is the date on which a specification is received in the Office. Modified text to clarify that applications filed prior to December 18, 2013 are subject to pre-PLT filing date requirements, and therefore are required to include a description, at least one claim, and any necessary drawings to receive a filing date.

    —In subsection I, added text to state that for design continued prosecution applications (which are not available for international design applications) filed on or after September 16, 2012 an inventor's oath or declaration is not required if the prior application contains an application data sheet with the name, residence, and mailing address for each inventor, in accordance with 37 CFR 1.53(d)(1)(ii) as revised in the interim rule Changes to Continued Prosecution Application Practice,79 FR 12384 (March 5, 2014)(adopted as final, 79 FR 68121 (November 14, 2014)). Revised text to include benefit claims to international design applications under 35 U.S.C. 386(c).

    601.01(a)

    Pertaining to subsection II. Completion of Nonprovisional Application Under 35 U.S.C. 111 Subsequent to Filing:

    —Added new subsection II.A that discusses the completion of nonprovisional applications, except for design applications, which are filed on or after December 18, 2013.

    —Redesignated former subsection II.A as II.B, and modified the Editor Note to update applicability information.

    —Added text to subsection II.B to explain that 37 CFR 1.53(f) was further revised, effective December 18, 2013, to require that the inventor's oath or declaration or substitute statement must be filed no later than the date the issue fee is paid. Deleted the parenthetical discussing the use of the inventor's oath or declaration from a prior application under 37 CFR 1.53(d) in view of the 2014 CPA rulemaking.

    —In subsection II.B, revised discussion of 37 CFR 1.53(f) for consistency with the PLT implementation rule. Also added text to clarify that if applicant fails to properly reply to a "Notice Requiring Inventor's Oath or Declaration" before or with payment of the issue fee, then the application will be regarded as abandoned.

    —Redesignated former subsection II.B as II.C, and modified the Editor Note to update applicability information.

    601.01(a)

    Pertaining to subsection III. Application Under 35 U.S.C. 111(a) Filed By Reference:

    —Added new subsection III to discuss filing an application under 35 U.S.C. 111(a) by reference to another application. Includes 35 U.S.C. 111(a) and (c), and 37 CFR 1.57(a), as revised by the PLTIA and PLT implementation rule, respectively.

    —Subsection III provides a detailed explanation of reference filing requirements. As provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application under certain conditions.

    601.01(b)

    —Added text to explain the filing date requirements for provisional applications filed on or after December 18, 2013. For example, the filing date of an application under 35 U.S.C. 111(b) is the date on which a specification is received in the Office.

    601.01(c)

    —In subsection I, added that a provisional application is not entitled to claim priority or benefit to a prior-filed application under 35 U.S.C. 386.

    —In subsection II, added an Editor Note to explain the limited applicability of certain paragraphs of 37 CFR 1.53 to applications filed under 35 U.S.C. 111 on or after December 18, 2013, and revised the text of 37 CFR 1.53(c) as amended by the PLT implementation rule. Added text to clarify the requirements for converting a provisional application into a nonprovisional application in light of filing date requirement changes.

    601.01(d)

    —Modified text to clarify the filing date requirements of an application in light of the PLT implementation rule.

    —In subsection I, in the last paragraph, revised text to reflect that provisional application files are held in the Office's Image File Wrapper (IFW) system and will be automatically abandoned at the end of the pendency period.

    —In subsection II, paragraph (B), clarified that an application is not entitled to a filing date if the application was filed under 35 U.S.C. 111(a) prior to December 18, 2013 or is a design application and omitted a specification.

    —Revised title of subsection III to read "Application Forwarded to Examiner." Added text to explain the filing date requirements for design applications and for applications other than design applications filed on or after December 18, 2013. Also revised text to include international design applications as applications for which benefit can be claimed under 37 CFR 1.78.

    601.01(e)

    —Added an Editor Note to limit applicability of this section to nonprovisional applications filed prior to December 18, 2013 or to design applications. Similarly, modified text to clarify the applicability of the guidance provided in this section.

    —Added a sentence to clarify that for nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, there is no need to request conversion to a provisional application because such applications do not require presentation of at least one claim to obtain a filing date.

    601.01(f)

    —Added an Editor Note to limit applicability of this section to nonprovisional applications filed prior to December 18, 2013 or to design applications. Similarly, modified text to clarify the applicability of the guidance provided in this section. Also, revised text to include an international design application as an application for which benefit can be claimed under 37 CFR 1.78.

    601.01(g)

    —Modified text to clarify the different filing date requirements in regard to submitting drawings. Drawings if necessary as provided for in 35 U.S.C. 113 are required upon filing for applications filed prior to December 18, 2013 and for design applications. For applications filed under 35 U.S.C. 111 on or after December 18, 2013, except for design applications, drawings are not required to receive a filing date.

    —In subsection I, revised text to include an international design application as an application for which benefit can be claimed under 37 CFR 1.78. Also, deleted text that reflected discontinued paper processing and inserted text that reflects electronic processing and storage of files. In the last paragraph, clarified when correction is required if, in applications filed with drawings with several views, the specification is not consistent with the drawings as labelled.

    601.02

    —Added "of attorney" after "power" in first paragraph in order to provide proper nomenclature.

    601.03(a)

    —Changed "would be" to "is" to improve grammar in the paragraph starting with "The submission of a daytime …."

    601.03(b)

    —Changed "would be" to "is" to improve grammar in the paragraph starting with "The submission of a daytime …" and corrected several other errors in grammar.

    601.05

    —Added "a nonprovisional international design application" to the list of applications in which an application data sheet may be submitted.

    601.05(a)

    —Updated 37 CFR 1.76 and the discussion thereof for consistency with the Hague implementation rule. Added text to the Editor Note to explain that the changes to 37 CFR 1.76(b)(3) are only applicable to applications filed under 35 U.S.C. 111 on or after December 18, 2013.

    —In subsection I, added a new paragraph to discuss application data sheet (ADS) requirements for reference filing under 37 CFR 1.57(a). Also, added an explanation regarding the requirements of 37 CFR 1.46(b) if an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under 37 CFR 1.46(a).

    —In subsection II, revised the title to include "or information otherwise of record" and revised text to clarify that a corrected or updated ADS is required even if an ADS was not previously filed. Also, revised text to clarify that in an ADS, identification of information that is being changed is not required for an ADS included with the initial submission under 35 U.S.C. 371 and that any change to inventorship, foreign priority, and domestic benefit must comply with the requirements of 37 CFR 1.48, 37 CFR 1.55, and 37 CFR 1.78, respectively. Also, modified text to state that a corrected ADS should be filed with a request for a corrected filing receipt unless accompanied by a request to take some other action and to further clarify how changes should be indicated on a corrected ADS.

    —In subsection III, added 37 CFR 1.64 to the listing of "37 CFR 1.63 or 1.67" to accurately reflect the language in the current version of 37 CFR 1.76. Added text to explain that 37 CFR 1.76(d)(2) provides that information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form or certain Patent Law Treaty Model Forms. Also, at the end of the first example, added "with underlining for inserts and strike-through or brackets for text removed." Added cross-references to MPEP §§ 602.01(c) et seq. and 605.01, subsection II.

    —In subsection IV, added several paragraphs to discuss newly added provisions of 37 CFR 1.76(f) and (g) that permit use of Patent Law Treaty Model International Forms as appropriate or the Patent Cooperation Treaty Request Form in lieu of an application data sheet under 37 CFR 1.76 to provide certain information.

    601.05(b)

    —Updated 37 CFR 1.76 for consistency with the PLT implementation rule and added an Editor Note to clarify its applicability.

    —In subsection I, clarified that the applicant's suggested classification and TC assignment may be provided but the Office no longer uses such information. Also, deleted the paragraph about providing classification information for provisional applications because the Office does not use such information.

    —In subsection III, added text to explain that information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form or certain Patent Law Treaty Model Forms in accordance with 37 CFR 1.76(d)(2). Deleted text that discussed correction of a typographical or transliteration error in the spelling of an inventor's name because it is does not reflect current Office policy. Added text to state that if an inventor's name is incorrect, a request under 37 CFR 1.48(f) is required as is explained in MPEP§ 602.01(c)(2).

    —Added a new subsection heading "IV. ADDITIONAL INFORMATION" in order to mirror the structure in MPEP § 601.05(a). In subsection IV, added text to refer to MPEP § 601.05(a) for a discussion of the provisions of 37 CFR 1.76(f) and (g).

    602.01

    —Revised subsection I to update 37 CFR 1.41 and add text to explain the provisions of new 37 CFR 1.41(f).

    602.01(a)

    —Updated 35 U.S.C. 115(g)(1) and 37 CFR 1.63(d)(1).

    —In subsection I.A, added a paragraph explaining that 37 CFR 1.1021(d)(3) provides an alternative to the requirement in 37 CFR 1.63(b) to identify an inventor for nonprovisional international design applications.

    602.01(c)

    —In subsection I.A, revised text of the first paragraph to clarify when inventorship is set in an application.

    602.01(c)(1)

    —In the Editor Note, changed "applications" to "requests" to more accurately state the applicability of pre-AIA 37 CFR 1.48 as to requests filed before September 16, 2012. Inserted the current version of 37 CFR 1.48 which reflects the provisions in effect as amended by the AIA implementation rule packages. Deleted the sentence "A request filed on or after September 16, 2012 under 37 CFR 1.48(a) or (d) will generally correct inventorship in the application in which it is filed" because it was duplicative of other text in the section.

    —In subsection I, added a sentence to the end of the second paragraph to explain that the ADS must identify information being changed with underlining and strike-through or brackets, as appropriate.

    —In subsection III, added the parenthetical "(in addition to the processing fee)" after 37 CFR 1.17(d).

    —In subsection IV, added a sentence indicating that when an inventor is being added, applicants should file a corrected ADS or new cover sheet providing the residence of all inventors.

    602.01(c)(2)

    —In the Editor Note, deleted "in an application" to more accurately state the applicability of pre-AIA 37 CFR 1.48 as to requests filed before September 16, 2012.

    —Revised text to clarify the procedures for correcting inventorship by adding a parenthetical after "desired order" and adding the clause "[i]n addition to the corrected application data sheet," to the beginning of the last sentence.

    602.01(c)(3)

    —In the Editor Note, delete two instances of "in an application" and inserted "requests for" to more accurately state the applicability of current 37 CFR 1.48 as to requests filed on or after September 16, 2012. Inserted "pre-AIA" before certain regulations (e.g., 37 CFR 1.48 and 37 CFR 1.63) to clarify which version of the regulation is being discussed.

    —In subsection II, added the phrase "but prior to September 16, 2012" in Example A. In subsection III.E, updated form paragraphs 2.13 and 2.14.01.

    602.03

    —Revised the section title to "Office Finds the Inventor's Oath or Declaration Defective" in order to clarify that this section is limited to policies and procedures when the Office finds an error. In the first paragraph, added "for applications filed on or after September 16, 2012 following "condition for allowance" to clarify that delayed filing of an inventor's oath or declaration until allowance is limited to applications filed on or after September 16, 2012.

    602.04

    —Added an Editor Note to 37 CFR 1.66 to state its applicability only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

    602.05(a)

    —Deleted the first paragraph as duplicative of the Editor Note.

    602.05(b)

    —Deleted the first paragraph as duplicative of the Editor Note.

    602.08(a)

    —In subsection III, deleted the one of the repetitious phrase "in an application filed" in the last paragraph.

    602.08(b)

    —In subsection I added a cross-reference to MPEP § 402.03 for a further discussion of signature requirements. Clarified the fourth paragraph by revising the text to indicate it is improper for an applicant to sign an oath or declaration which is not attached to or does not identify "the application (e.g., a specification and drawings) to which it is directed." Added a sentence to refer to 37 CFR 1.1021(d) and 1.1067 for nonprovisional international design applications. Inserted "pre-AIA" prior to "35 U.S.C. 102(e)" to clarify that the citation is to the provision in effect on March 15, 2013.

    —In subsection III.A, in the last sentence of the second paragraph added "along with a petition under 37 CFR 1.182" after "certificate of correction." In subsection III.B, added a sentence to clarify that the corrected ADS must identify the information being changed.

    602.08(c)

    —Added items (C) and (D) and relettered the remaining items in order to be consistent with 37 CFR 1.5(a).

    602.09

    —Inserted 35 U.S.C. 116 as amended by the AIA, and added "(pre-AIA)" to the version of 35 U.S.C. 116 in effect prior to September 16, 2012.

    603

    —In subsection II, added "(pre-AIA)" in the title of 37 CFR 1.67 to clarify that it is the version in effect for applications filed prior to September 16, 2012.

    604

    —Added text regarding inventorship requirements for international design applications.

    605.01

    —In subsection I, added an Editor Note and updated 37 CFR 1.46(b) and (c) to reflect changes made in the Hague implementation rule. At the end of the last paragraph, added two sentences to state that the corrected ADS must identify the information being changed and the effect of changing the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii).

    —In subsection II, in the first paragraph, added "in accordance with 37 CFR 1.76(c)(2)."

    605.02

    —Added "(pre-AIA)" in the title of 37 CFR 1.41 and 1.45 to clarify that they are the versions in effect for applications filed prior to September 16, 2012.

    606.01

    —Deleted "a formal" and inserted "an" prior to "examiner's amendment" for proper current nomenclature. Inserted a cross reference to MPEP § 1302.04(a) regarding an examiner's amendment that changes the title of invention.

    607

    —In subsection I, added "For international design applications under 35 U.S.C. 385, see 37 CFR 1.1031 for the required fees."

    —In subsection II, added text in the first paragraph to clearly explain the Office's procedure for counting pages of preliminary amendments submitted on the filing date, and to indicate that the Office will not count the sheets of paper making up any English translation of a non-English language specification if submitted with the application on filing.

    —In subsection III, added a paragraph to explain the application of excess claim fees for nonprovisional applications filed under 35 U.S.C. 111(a) without claims.

    608.01

    —Deleted the phrase "Jumbo Application" in form paragraph 6.31 and the discussion thereof because the Office no longer characterizes applications as "jumbo."

    —In subsection I, updated 37 CFR 1.52 and 1.58. Inserted a reference to and website address for the EFS-Web Legal Framework.

    —In subsection V, added text and cross-references to MPEP § 601.01(a), subsection III, pertaining to reference filing. Added "via EFS-Web" to the recommended ways to file original application papers.

    —In subsection VI, modified language for consistency with 37 CFR 1.58(a) as revised by the PLT implementation rule.

    608.01(a)

    —Added "(e.g., not required)" after "preferable" to clarify that the order of arrangement of the specification elements is not a requirement. Also, added "in compliance with 37 CFR 1.76" after "application date sheet" in the fifth paragraph of text. Updated form paragraphs 6.01 and 6.02.

    608.01(b)

    —Updated 37 CFR 1.72 regarding the requirements (e.g., a recommended word limit) for an abstract.

    —In subsection I.A, clarified language that a reader should be able to quickly determine the nature and gist of the invention and what is new from a cursory inspection of the abstract. In subsection I.B, deleted redundant sentences regarding compounds or compositions in chemical patents. Revised subsection I.C for consistency with 37 CFR 1.72 regarding the recommended word limit for an abstract. In subsection I.D, deleted the phrase "with any necessary editing and revision on allowance of the application" and inserted a new sentence to discuss the same with a reference to MPEP § 1302.04. After the third sample in subsection I.E, added subsection heading "F. Form Paragraphs." In subsection I.F, updated form paragraphs 6.14, 6.15, 6.16, and 6.16.01.

    608.01(c)

    —Added "(but is not required to)" after "may" to clarify that the suggested elements in the background of the invention are not required.

    608.01(d)

    —In first paragraph, deleted redundant text indicating that stereotyped general statements should not be in the brief summary of invention.

    608.01(f)

    —Added text to limit applicability of the citation of MPEP § 601.01(f) to applications, other than design applications, filed prior to December 18, 2013. Similarly, modified text to clarify the applicability of the guidance provided in MPEP § 601.01(g). Updated 37 CFR 1.84(a)(2) and (y) as amended by the Hague implementation rule.

    608.01(l)

    —Revised section title to "Claims Present on the Application Filing Date." In the first paragraph, "original claims" was replaced with "claims present on the filing date of the application." Second paragraph revised for consistency with current nomenclature.

    608.01(m)

    —In form paragraph 6.18.01, added a reference to 37 CFR 1.75(h).

    608.01(n)

    —Corrected 35 U.S.C. 112(e) by inserting missing heading. In subsection I.E, deleted "when granting the filing date" after "Office of Patent Application Processing." In subsection I.G.1, added the phrase "or submitted in response to an OPAP notice requiring claims" to clarify the procedure when the application is not filed with claims.

    608.01(o)

    —In the second paragraph, changed "original claims" to "claims present on the filing date of the application" for clarity because claims are no longer required to be present on the filing date. In the first sentence of the third paragraph, added the phrase "including claims first presented after the application filing date where no claims were submitted on filing" for clarity.

    608.01(p)

    —In subsection I, updated 37 CFR 1.57 for consistency with the Hague implementation rule. Revised text to reflect the addition of 37 CFR 1.57 in 2004, and to discuss changes that occurred in 2013, i.e., the addition of a reference filing provision in 37 CFR 1.57(a) and relocation of the subject matter of former paragraph (a) to paragraph (b) of 37 CFR 1.57. Also added a paragraph that briefly discusses reference filing and refers to MPEP § 601.01(a), subsection III.

    608.01(q)

    —Updated form paragraph 6.28.02, examiner note 2.

    608.01(v)

    —Section title revised to read "Marks Used in Commerce and Trade Names." Added 15 U.S.C. 1127 and revised text to address trade names and marks as defined in 15 U.S.C. 1127 (e.g., changed "product" to "product, service, or organization"). Form paragraph 6.20 was similarly revised to address marks and trade names.

    —In the last paragraph of subsection II, revised to include "and reply" after "complaint letter" to clarify that both the letter and the reply should be forwarded to the DCPEP.

    608.02

    —Updated 37 CFR 1.81(a) as amended by the PLT implementation rule and inserted an Editor Note to state the applicability of paragraph (a). Inserted 37 CFR 1.81(a) (pre-PLT) as in effective prior to December 18, 2013.

    —Revised title of subsection I and inserted new subsection I.A to discuss the filing date requirements regarding drawings for applications filed on or after December 18, 2013. Subsection I.B, directed to applications filed prior to December 18, 2013, contains the former text of subsection I, further modified to clarify when pre-PLT law and policy applies. The last paragraph of subsection I.B was further revised to state that a sequence listing or table should not be included in both the drawings and the descriptive portion of the specification in accordance with 37 CFR 1.58(a) and 1.83(a).

    —In subsection III, text revised to state whether pre-PLT law and policy applies or post-PLT law and policy applies.

    —In subsection IV, modified text to clarify that the lack of a drawing is treated as an informality and a filing date will be accorded. Deleted citations to 37 CFR 1.83 as its provisions do not apply when the drawing is missing. Clarified language regarding when the examiner may require a drawing under 37 CFR 1.81(c).

    —In subsection V, updated 37 CFR 1.84(a)(2) and (y) as amended by the Hague implementation rule. Inserted cross-reference to MPEP § 608.02(b) for information pertaining to the acceptability of drawings. Deleted text regarding the acceptability of good quality copies or facsimile copies and added a reference to international design reproductions and 37 CFR 1.1026. Added text to limit applicability of the citation of MPEP § 601.01(f) to design applications or applications filed prior to December 18, 2013. Similarly modified text to clarify the applicability of the guidance provided in MPEP § 601.01(g).

    —In subsection VII, inserted 37 CFR 1.84(a)(1). Added text in subsection VII.A pertaining to black and white drawings, including a reference to MPEP § 608.02(c) for more information. Original text is located in new subsection VII.B, further modified to clarify when black and white photographs and grayscale drawings are acceptable in utility and design applications. Deleted text regarding the requirements of photographic paper or mounted on Bristol Board.

    —In subsection VIII, updated 37 CFR 1.84(a)(2) as amended by the Hague implementation rule. Added text to state the required quality of the drawings. Also, revised text and FP 6.24.01 to state that one set of color drawings or color photographs is required if submitted via the Office electronic filing system, but three sets of color drawings or color photographs are required if not submitted via the Office electronic filing system. Text was also revised to state that color photographs or drawings will be stored in SCORE and a black and white copy will be stored in the IFW along with a SCORE placeholder sheet. Text and FP 6.24.01 were revised to limit the requirement for a petition under 37 CFR 1.84(a)(2) and (b)(2) to utility applications. Added a cross-reference to MPEP § 608.02(c).

    —In subsection IX, inserted a new paragraph to discuss that design applications should not generally use graphic symbols and that color drawings are permitted in design applications. Added cross references to MPEP §§ 1503.02 and 608.02. Revised the last paragraph to be limited to utility applications.

    608.02(a)

    —Added a citation to MPEP § 601.01(g) in reference to procedures when an application is missing drawings. Clarified text to indicate that OPAP will send a notice if drawings are unacceptable for purposes of publication and will not release applications to the technology centers until acceptable drawings are filed.

    608.02(b)

    —Updated 37 CFR 1.85(c) as amended by the Hague implementation rule. In subsection III, added an alternative citation to 37 CFR 1.1026 for the standard to which drawings must comply.

    608.02(c)

    —Added discussion of the processing and storage of drawings (including black and white line drawings, grayscale and color drawings, and black and white and color photographs) filed in various types of applications (e.g., utility applications under 35 U.S.C. 111, international applications, international design applications) or reexamination proceedings.

    608.02(d)

    —Updated 37 CFR 1.83(a) as amended by the PLT implementation rule.

    608.02(e)

    —In the first sentence, changed "see to it" to "ensure."

    608.02(p)

    —Updated 37 CFR 1.85(c) and 1.121(d) for consistency with the Hague implementation rule.

    608.02(z)

    —Revised text in the fourth paragraph to delete "(with no extensions of time permitted)" because current policy permits extensions of time for some notices.

    608.03(a)

    —In the second to last paragraph and in form paragraph 6.48, change "one month" to "two months" in light of policy changes in the implementation of the PLT.

    608.04

    —In the first paragraph, changed "original claims" to "claims present on the filing date of the application" for clarity because claims are no longer required to be present on the filing date. Added a cross-reference to MPEP § 211.05 for new matter in continuation or divisional applications.

    608.04(a)

    —Revised section title to read "Matter Not Present in Specification, Claims, or Drawings on the Application Filing Date." Revised the first sentence by adding "present on the filing date of the application" and deleting "original" for clarity because claims and drawings are no longer required to be present on the filing date.

    608.05

    —Added 37 CFR 1.52(a)(5) and updated 37 CFR 1.52(e) as amended by the PLT implementation rule. Revised to clarify text for consistency with 37 CFR 1.52(e).

    —In subsection I, added a citation to 37 CFR 1.77(b)(5) and to form paragraphs 6.61.02 and 6.71.02. In subsection I.A, revised text to correspond to 37 CFR 1.52(e), and to state that if a sequence listing text file submitted via EFS-Web on the application filing date complies with 37 CFR 1.824(a)(2)-(6) and applicant has not filed a sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy and the computer readable form. Also, revised text to explain that submission of the sequence listing in a PDF file on the application filing date is not recommended. Added a cross-reference to MPEP § 2422.05. In subsection I.B, changed the citation to 37 CFR 1.821(c) or (e) to 37 CFR 1.824(a)(2)-(6) and (b). In subsection I.C, added "text" prior to "file types" in the first sentence.

    —In subsection II, deleted the sentence "CD-R discs must be finalize so that they are closed to further writing to the CD-R" because this requirement was removed from 37 CFR 1.52(e). Revised text to clarify the reason incorporation by reference is required. Also modified text to state that an amendment to the material on the compact disc must be done by submitting a replacement compact disc or by filing the material as text file(s) via EFS-Web. Revised form paragraphs 6.61.02 and 6.71.02.

    608.05(a)

    —Revised text throughout the section to indicate that as an alternative to submission on a compact disc, a computer program listing appendix may be submitted in an ASCII text file via EFS-Web.

    —Subsection I is further revised to state that copies of publicly available program listings are available via Public PAIR, or may be purchased from the Office on paper or compact disc.

    —In subsection II, revised form paragraphs 6.64.01 and 6.64.02 to discuss submission of the computer program listing via EFS-Web as a text file; form paragraph 6.64.03 has been deleted as redundant.

    —Subsection III revised to state that the computer program listing appendix submitted electronically via EFS-Web in ASCII text or on a compact disc will be identified in the patent. Deleted text that reflected the discontinued practice of identifying the appendix on the front page of the patent and that reflected paper processing (e.g., placing a label on the file wrapper). Revised text to state that the specification entry "should" appear at the beginning of the specification to be consistent with 37 CFR 1.77.

    608.05(b)

    —Revised to indicate that submission of large tables via EFS-Web as text file(s) is permitted and is preferred. Deleted the last sentence in the first paragraph regarding the requirement to finalize CD-Rs because this requirement was removed from 37 CFR 1.52(e).

    —Added indication that a single table contained on fifty pages or less may be submitted as part of the specification in PDF (if filed via EFS-Web), and that landscape oriented tables should not be filed via EFS-Web.

    —Form paragraphs 6.63.01 and 6.63.02 revised to discuss submission of tables via EFS-Web as text files.

    608.05(c)

    —Added cross-reference to new MPEP § 2422.03(a) which discusses in detail submission of sequence listings as ASCII text files via EFS-Web.

    609

    —Updated 37 CFR 1.97(b)(3)-(5) as amended by the Hague implementation rule. In the first sentence of the second paragraph of text, deleted "filed under 35 U.S.C. 111(a)" because the duty to submit material information applies to all nonprovisional applications.

    609.01

    —In the chart in item (A), updated row (1) to add a provision concerning the time for filing information disclosure statements for international design applications as set forth in 37 CFR 1.97(b)(5).

    609.02

    —Added new subsection title "I. Consideration of Prior Art Cited in a Parent International Application" prior to existing text. Designated prior subheading as subsection II. IDS in Continued Examinations or Continuing Applications. In subsection II.A.2, added "(other than an international application; see subsection I, above)" in the first paragraph and added "and the timing requirements of 37 CFR 1.97" at the end of the second paragraph for clarification.

    609.04(a)

    —In subsection I, added a cross-reference to MPEP § 707.05(e) for more information on citing to publications and electronic documents in the second to last paragraph.

    609.04(b)

    —In the introductory text and in subsection I, added information to reflect a new provision in 37 CFR 1.97(b)(5) concerning the time for filing information disclosure statements for international design applications.

    609.05(b)

    —Deleted redundant text "and any citations considered will have the examiner's initials adjacent thereto (or the bottom of each page … examiner's electronic initials)" in the third paragraph.

    609.07

    —Revised "EFS" to "EFS-Web" in multiple locations. Modified text by deleting "signing, and dating" after "initialing" or "signed, and dated" after "initialed" to make text consistent with current procedures. Also, deleted text that referred to discontinued paper processing steps. Revised the penultimate paragraph to state that "Applicants and registered practitioners are permitted to sign portions of an EFS-Web submission, including an IDS, with an electronic signature" and deleted the reference to a 2003 version of EFS system.

    609.08

    —Revised to delete the reference to a prior version of eDAN and to deleted the entire text regarding electronic annotation and signature as such practice covered in detail elsewhere in MPEP § 609 et seq. Also deleted the last sentence of the first paragraph regarding IDSs annotated by hand because most IDSs are annotated electronically. Inserted a cross-reference to MPEP § 609.04(b).

    [top]

      

    CHAPTER 700:

    Passim

    —Corrected reproduced 35 U.S.C. 103 (both AIA and pre-AIA) by removing "of this title."

    701

    —Updated 35 U.S.C. 100(i)(1)(B).

    702

    —Added discussion of changes to filing date requirements made pursuant to the Patent Law Treaties Implementation Act of 2012 (PLTIA).

    702.01

    —Updated form paragraphs 7.01 and 7.02 to provide a two-month period for reply.

    704.10

    —Updated 37 CFR 1.105(a)(1).

    704.11(a)

    —Updated discussion of 37 CFR 1.105(a)(1) to address the identification of applications filed before June 8, 1995 and the requirement that they be kept in confidence by the Office per 35 U.S.C. 122(a). References to form paragraphs 7.104.02.fti and 7.104.02.aia changed to reference form paragraph 7.104.02.

    704.12(c)

    —Updated form paragraph 7.95 to provide a two-month period for reply.

    704.14(a)

    —Added Form Paragraph 7.104.02 for use in requiring information from the applicant regarding rescission of a statement under 37 CFR 1.55 or 1.78.

    705.01

    —Clarified the procedure where primary examiners from requested and requesting Technology Centers (TCs) agree that a Patentability Report from the requested TC is necessary. Deleted reference to the IFW Manual.

    705.01(a)

    —Deleted indication that the Patentability Report is not given a paper number, and deleted reference to IFW Manual.

    705.01(e)

    —Deleted reference to IFW Manual.

    706.02

    —Updated 35 U.S.C. 102(d)(2).

    —In subsection II, added discussion of machine translations, translation resources and conditions for making an Office action final, including a supporting citation to In re Orbital Technologies Corporation. Also moved the cross reference to MPEP § 706.07(a) and added a cross reference to MPEP § 706.07(b) regarding final actions.

    —In subsection IV, added reference to 35 U.S.C. 386(c).

    706.02(a)

    —Revised to add form paragraphs 7.03.aia and 7.03.fti, as well as an introductory sentence.

    706.02(a)(2)

    —In subsections II and III, inserted "pre-AIPA" before "35 U.S.C. 102(e)" to indicate the version of 35 U.S.C. 102(e) in force prior to November 29, 2000. Also in subsection II, inserted "pre-AIA" with regard to 35 U.S.C. 374.

    706.02(b)(1)

    —Updated discussion of overcoming a prior art rejection by submitting a benefit claim under 35 U.S.C. 120 or 35 U.S.C. 119(e), or by identifying a prior foreign application under 35 U.S.C. 119(a) – (d) in items (A)-(C).

    706.02(b)(2)

    —Updated discussion of overcoming a prior art rejection by submitting a benefit claim under 35 U.S.C. 120 or 35 U.S.C. 119(e), or by submitting a claim to priority under 35 U.S.C. 119(a) – (d).

    —Added an indication that, effective December 18, 2013, the PLTIA provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e). Included a cross-reference to MPEP § 213.03, subsection III for more information.

    706.02(c)

    —Revised section text and Examiner Notes in the form paragraphs to state that a 2-month time period should be given for any reply to a requirement for information.

    706.02(f)(1)

    —In subsection I, added reference to 35 U.S.C. 386(c). In subsection II, corrected date to March 15, 2013 immediately preceding the examples, and added benefit under 35 U.S.C. 365(c) or 386(c) to Example 1.

    706.02(f)(2)

    —In subsection I, revised the title and notes in the form paragraphs to refer to common assignee, common applicant or at least one common joint inventor. In form paragraph 7.15.01.aia, note 3 further revised to clarify the conditions under which 35 U.S.C. 102(a)(2) may be applied.

    706.02(i)

    —Revised to rearrange the order of presentation of the form paragraphs. Revised several form paragraphs to make minor editorial changes and to clarify the applicability information in the notes.

    —As appropriate, revised form paragraphs to add references to international design applications and/or to 35 U.S.C. 386. Form paragraphs for provisional rejections revised to refer to a common assignee, a common applicant or at least one common joint inventor.

    —In form paragraph 7.15.fti, notes 3 and 5, added a reference to form paragraph 7.15.01.fti. In form paragraph 7.15.02.aia, note 9 was revised to indicate the applicant should be required to amend or cancel patentably indistinct claims using form paragraph 8.27.aia. In form paragraph 7.15.02.fti, note 10 was added.

    706.02(k)

    —In subsection II, changed "instructive as to" to "illustrative of." In subsection II, revised examples of rejection scenarios for clarity.

    706.02(l)

    —Added cross reference to MPEP § 717.02 et seq.

    706.02(l)(2)

    —In subsection I, added ", or under an obligation to assign to" and inserted "pre-AIA" before the references to statutory sections.

    —In subsection II, deleted sentence that referenced, but did not set forth, an exemplary statement. Further revised to delete the alternative of submitting the statement of common ownership in a separately labeled section. Clarified subsection II by adding an indication that "[t]he statement must be signed in accordance with 37 CFR 1.33(b)" and adding an explanation to examiners that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention.

    —In subsection III, added an indication that the applicant or patent owner may, but is not required to, present evidence supporting the existence of a joint research agreement.

    706.02(l)(3)

    —Revised "the applicant(s) or an attorney or agent of record" to "the applicant(s) or patent owner(s)" in the context of who should make a statement of common ownership.

    —In subsection III, clarified that the availability of double patenting rejections is subject to the conditions discussed in MPEP § 804 et seq.

    706.02(m)

    —Revised to rearrange the order of presentation of the form paragraphs. Revised several form paragraphs to make minor editorial changes and to clarify the applicability information in the notes.

    —Revised the notes of several form paragraphs to delete the reference to Graham v. Deere and add a reference to MPEP § 2144.

    —As appropriate, revised form paragraphs to add references to international design applications. In addition, form paragraphs for provisional rejections and certain obviousness rejections revised to refer to a common assignee, a common applicant, or at least one common joint inventor.

    706.03(a)

    —Subsection II revised for consistency with MPEP § 2103, subsection III, MPEP § 2106, subsection II, and the 2014 Interim Guidance on Patent Subject Matter Eligibility,79 FR 74618 (Dec. 16, 2014).

    —In subsection IV, revised form paragraphs relevant to the rejection of claims directed to nonstatutory subject matter for consistency with guidance that was provided to examiners on December 16, 2014 (see www.uspto.gov/sites/default/files/documents/sme_memo_20141216.pdf).

    706.03(c)

    —Form paragraph 7.33.01 revised to more clearly explain the lack of enablement rejection.

    706.03(d)

    —Revised form paragraph 7.34.11 which should be used when it cannot be determined from the specification whether the term "means" connotes function or structure.

    706.03(e)

    —Added form paragraphs 7.30.03.h, 7.30.03 and 7.30.04 related to claim interpretation and means (or step) plus function claim limitations.

    706.03(u)

    —Revised order of form paragraphs.

    706.07(a)

    —Added cross-reference to MPEP § 1207.03(a) for guidance in determining what constitutes a new ground of rejection.

    706.07(f)

    —Updated form paragraph 13.02.02 so it is no longer limited to authorizations made by telephone.

    706.07(g)

    —Cross-reference to the Notice of Appeal and the appeal fee updated to 37 CFR 41.20(b). Revised the flow chart and form paragraphs to set a two month period for reply to a notice of nonresponsive submission.

    706.07(h)

    —Updated 37 CFR 1.114(e).

    —Revised the discussion and form paragraphs to indicate the provisions of 37 CFR 1.114 do not apply to an international application that does not comply with 35 U.S.C. 371 or to an international design application. Updated the time periods for reply to two months.

    —Forms PTO/SB/30 and PTO-2051 were updated.

    707

    —Revised the discussion of interviews suggested by the examiner whereby the application may be placed in condition for allowance.

    —Updated the discussion of communications from the examiner with respect to 35 U.S.C. 132 and 37 CFR 1.104.

    707.02

    —Added "or more" to the discussion of applications that have been pending over five years.

    707.07(l)

    —In view of the restructuring of 35 U.S.C. 112 for applications filed on or after September 16, 2012, deleted the words "first paragraph."

    708.01

    —Updated 37 CFR 1.102(a) and 1.102(e)(1).

    708.02

    —Updated 37 CFR 1.102(a) and 1.102(e)(1). Added an indication that advancement of examination under 37 CFR 1.102 may be sought via a petition to make special under 37 CFR 1.102(c) or (d), or via a request for prioritized examination under 37 CFR 1.102(e).

    —In subsections III, IV, and V, added an indication that "any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a)."

    —In subsection VI, added an indication that applications granted prioritized examination remain special until prioritized examination is terminated or until a final disposition of the application. Also added a cross-reference to MPEP § 708.02(b), subsection II.

    708.02(a)

    —In subsections III, VIII.D, VIII.E and IX, updated the discussion and form paragraphs to change the period for reply to two months and to indicate extensions of time under 37 CFR 1.136(a) are permitted but the filing of a petition for an extension of time will result in the application being taken out of the accelerated examination program. Form paragraph examiner notes revised to indicate the provisions of 37 CFR 1.114 apply to an international application "that complies with 35 U.S.C. 371."

    —In subsection VIII.C, added reference to 35 U.S.C. 386(c).

    —Deleted form paragraphs 24.01.AE, 24.02.AE and 24.03.AE.

    708.02(b)

    —Revised to incorporate the changes, including updates to 37 CFR 1.102(e)(1), necessitated by the interim rule Changes to Permit Delayed Submission of Certain Requirements for Prioritized Examination,79 FR 12386, March 5, 2014 (adopted as final, 79 FR 68124, Nov. 14, 2014).

    —Revised to indicate that any item submitted on the same day the request for prioritized examination is filed will be considered to have been filed with the request under 37 CFR 1.102(e).

    —Revised to indicate that a fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee.

    —Revised to remove outdated information concerning the time period for reply under the accelerated examination program.

    708.02(c)

    ——Updated discussion of the Patent Prosecution Highway Program (PPH) for consistency with the information available from www.uspto.gov/patents-getting-started/international-protection/ patent-prosecution-highway-pph-fast-track.

    —Added information about the USPTO's participation in the Global PPH and IP5 PPH pilot programs, and updated the information about the USPTO's PPH agreements with intellectual property offices that are not yet included in the Global PPH.

    709

    —In subsection I.C, added a reference to 35 U.S.C. 386.

    710

    —Updated 35 U.S.C. 133 and 35 U.S.C. 267.

    710.01

    —Revised to indicate the time period for reply under 37 CFR 1.135(c) is generally 2 months.

    710.02

    —Updated 37 CFR 1.136.

    710.02(b)

    —Revised for consistency with the PLT, which entered into force with respect to the United States on December 18, 2013 and provides for a time period of at least two months for replies to most Office actions and other notices.

    710.02(d)

    —Revised to eliminate discussion of petitions to revive based on unavoidable delay under former 37 CFR 1.137(a)

    710.02(e)

    —Updated 37 CFR 1.136.

    —Deleted the discussion of "some writing that manifested an intent to obtain an extension of time," which is no longer required for the granting of a petition filed under 37 CFR 1.136(a).

    —Deleted reference to IFW Manual.

    —Subsection III revised to include a cross-reference to 35 U.S.C. 115(f) and indicate that if a Notice Requiring Inventor's Oath or Declaration (PTOL-2306) is sent with the Notice of Allowability, the required inventor's oath or declaration must be submitted no later than the payment of the issue fee.

    710.05

    —Updated 37 CFR 1.7(a) and updated the citation to the Executive Order regarding federal holidays that fall on a Sunday.

    711

    —Updated 37 CFR 1.138(b).

    711.01

    Updated forms PTO/AIA/24, PTO/AIA/24A and PTO/AIA/24B.

    711.02

    —Revised form paragraph 7.98.02 to remove discussion of petitions to revive based on unavoidable delay and updated the references to 37 CFR 1.137 for petitions based on unintentional delay.

    711.02(b)

    —Changed "paragraph" to "subsection" in items (F) - (H).

    711.03(c)

    —Updated 37 CFR 1.137 and the discussion of petitions to revive filed under 37 CFR 1.137 to remove the discussion of petitions to revive based on unavoidable delay and references to lapsed patents.

    —In subsection II, included a discussion of the notable changes made by the PLTIA and included newly added 35 U.S.C. 27.

    —In subsection II.A, removed citation to Ex parte Richardson and added new subsection II.A.1 entitled "Abandonment for Failure To Timely Submit A Copy of the Specification And Any Drawings In An Application Filed By Reference Under 35 U.S.C. 111(c) and 37 CFR 1.57(a)."

    —Renumbered former subsection II.A.1 as subsection II.A.2, removed the discussion of Brenner v. Ebbert and In re Mills, and added a discussion of sections 202(b)(6) and 201(b) of the PLTIA. Added a discussion of the issue fee and publication fee payable when applicant changes entity status with the filing of a petition to revive.

    —Added new subsection II.A.3, entitled "Abandonment for Failure To Provide Required Drawings."

    —Renumbered former subsection II.A.2 as subsection II.A.4, removed the requirement for the appeal brief fee from item (A), and revised item (B) to include a reference to 37 CFR 1.114(b).

    —Renumbered former subsection II.A.3 as subsection II.A.5 and included a cross-reference to 37 CFR 1.137(f) for the revival of an application abandoned for failure to timely provide notice of a foreign filing.

    —In subsections II.B through II.F, removed information relating to petitions to revive on the basis of "unavoidable" delay. In addition, in subsection II.B, updated the discussion of 35 U.S.C. 41(a)(7); in subsection II.C, updated forms PTO/SB/64, PTO/SB/64a, and PTO/SB/64PCT; in subsection II.D, deleted reference to the 1887 Pratt decision and removed discussion of petitions not filed within 1 year of the date of abandonment of the application; and in subsection II.F, deleted the Haines decision and changed the cross-reference to reference 35 U.S.C. 27 instead of 35 U.S.C. 41(a)(7).

    711.04(c)

    —Revised to reference MPEP § 403 instead of MPEP § 402.

    713.01

    —Subsections II and III were updated to incorporate changes described in the Federal Register Notice: Change to Internet Usage Policy To Permit Oral Authorization for Video Conferencing Tools by Patent Examiners,80 FR 23787 (April 29, 2015).

    713.04

    —Changed the time period specified form paragraph 7.84 to two months.

    713.05

    —Changed "no interview is permitted" to "interviews with examiners are not permitted."

    713.08

    —Deleted reference to IFW Manual.

    714

    —Updated 37 CFR 1.121(d). In subsection II.F, items (A), (C), and (F), changed "30 days or one month, whichever is later" to "two months."

    714.01(a)

    —Updated pre-AIA 37 CFR 1.33(b). Revised form paragraph 7.84.01 to provide a two-month period for reply.

    714.01(e)

    —Updated cross-references in the third paragraph that formerly referenced 37 CFR 1.78(a).

    —In subsection I, inserted "(for applications filed prior to September 16, 2012)" with respect to placing a reference to a prior filed application in the first sentence(s) of the specification, corrected cross-reference to MPEP § 211 et seq., changed "one month" to "two months," deleted the phrase "so long as no new matter is included in the specification," and updated the reference to former 37 CFR 1.63(d)(1)(iii).

    —In subsection II, moved to the first sentence the indication that "Applicants are strongly discouraged from submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application." Changed "executed oath or declaration under 37 CFR 1.63" to "oath or declaration in compliance with 37 CFR 1.63." Deleted a discussion of the former requirement for a supplemental oath or declaration under 37 CFR 1.67 if a preliminary amendment is filed that contains subject matter not included in the specification and drawings of the application. Changed "will be required to submit a supplemental oath or declaration" to "should submit a supplemental oath or declaration."

    714.03

    —Updated text and form paragraph 7.95 to provide a period for reply of two months.

    714.16

    —Changed "petition" to "request" and added a reference to 37 CFR 1.48(f) in each of items (F) and (G).

    715

    —Updated 37 CFR 1.131(a)(1) and (d)(2). Changed "applicant" to "applicant or patent owner" in the context of establishing a date of completion of the invention in a NAFTA or WTO member country.

    715.01(a)

    —Revised to provide an updated discussion of the use of declarations (or affidavits) under current 37 CFR 1.131(a) and current 37 CFR 1.132 to overcome a rejection under pre-AIA 35 U.S.C. 102(a), (e), or (f) where the rejection is based on a joint patent or published application to applicant and another.

    —Revised to include a requirement for an explanation of the presence of an additional inventor in the reference where the reference includes a claim reciting the subject matter relied upon in the rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination.

    —Revised to include a cross-reference to MPEP § 715.05 and an indication that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming another inventor which claims interfering subject matter as defined in 37 CFR 41.203(a).

    715.07(c)

    —In the last paragraph, changed "an applicant" to "the applicant or patent owner."

    716.10

    —Added a reference to In re DeBaun with respect to an unequivocal declaration by S under 37 CFR 1.132 that he/she conceived or invented the subject matter that was disclosed but not claimed in the patent or patent application publication and relied on in the rejection.

    —Revised to include a requirement for an explanation of the presence of an additional inventor in the reference where the reference includes a claim reciting the subject matter relied upon in the rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination.

    —Revised to include a cross-reference to MPEP § 715.05 and an indication that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming another inventor which claims interfering subject matter as defined in 37 CFR 41.203(a).

    —Corrected the citation to Ex parte Kroger.

    717.01

    —Updated 37 CFR 1.130(d) and form paragraph 7.68.aia.

    717.01(a)(1)

    —Revised the introductory text in item (A) to clarify that the list therein sets forth when the provision of 37 CFR 1.130(a) is not available. In item (A)(1), added "(e.g., patented, described in a printed publication, or in public use, on sale, or otherwise available to the public) following "the disclosure was made." After item (A)(2), changed "the exceptions of 35 U.S.C. 102(b)(1)(A) or 35 U.S.C. 102(b)(2)(A) to "declarations or affidavits pursuant to 37 CFR 1.130(a)."

    —In item (B), corrected citation to Ex parte Kroger.

    —Deleted the parenthetical (E) at the beginning of the paragraph following item (D) as the text therein was not intended to be part of the list.

    717.01(b)(1)

    —Revised the introductory text in item (A) to clarify that the list therein sets forth when the provision of 37 CFR 1.130(b) is not available. In item (A)(1), added "(e.g., patented, described in a printed publication, or in public use, on sale, or otherwise available to the public)" following "the disclosure was made."

    717.01(c)

    —In subsection I, added an indication that "Anyone who has knowledge of the facts discussed in the declaration may sign a declaration under 37 CFR 1.130," and clarified text explaining it is the applicant or patent owner who may submit (i.e., file) a declaration or affidavit under 37 CFR 1.130.

    717.02(a)

    —In subsection I, changed "the applicant (or the applicant's representative of record)" to "the applicant (or the patent owner)" in the context of who must make the statement of common ownership.

    —Subsection I further revised to insert new subsections "A. Definition of Common Ownership" and "B. Evidence Required to Establish Common Ownership" and to add an expanded discussion of common ownership for AIA applications based on the discussion of common ownership in MPEP § 706.02(l)(2).

    —In subsection II, deleted discussion of practice under pre-AIA 35 U.S.C. 103(c) and added an expanded discussion of joint research agreements under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) for AIA applications based on the discussion of joint research agreements in MPEP § 706.02(l)(2).

    717.02(b)

    —Corrected 37 CFR 1.104(c)(4)(ii)(A) and 37 CFR 1.71(g).

    717.02(c)

    —In subsection III, first sentence, inserted "subject to the conditions discussed in MPEP § 804 et seq."

    717.02(d)

    —Updated form paragraph 7.20.04.aia.

    718

    —Updated 37 CFR 1.131(d) and corrected a cross-reference to 37 CFR 1.131(c)(2).

    719

    —Added a reference to 35 U.S.C. 386.

    719.02

    —Corrected a cross-reference to MPEP § 602.08(a), inserted a cross-reference to MPEP § 601.05(a) for the formatting of corrected Application Data Sheets for patent applications filed on or after September 16, 2012, and inserted a cross-reference to MPEP § 601.05(b) for the formatting of Supplemental Application Data Sheets for patent applications filed prior to September 16, 2012.

    719.05

    —Updated to indicate that "[s]earches are listed in the 'SEARCHED' boxes and/or SEARCH NOTES box of the OACS Search Notes page." Revised examples throughout to reflect Cooperative Patent Classification (CPC).

    —In subsection I, revised title to "'SEARCHED' Boxes Entries" and extensively revised discussion of the "searched" box entries to reflect recording searches performed under the Cooperative Patent Classification (CPC), CPC Combination Sets, and U.S. Patent Classification (USPC) paradigms.

    —In subsection II: Added new subsection heading, "A. Format of Entries in the "SEARCH NOTES" Section." Replaced information type (A), limited classification search, with "Annotations associated with classification searches, as shown in the examples in subsection I above." Revised information type (B) to list "Text search performed in a particular database (where no classification search was performed)." Inserted new information type (C), "Searches made within the International Classification System (IPC)" and new information type (D) "Searches performed by the Scientific and Technical Information Center (STIC)." Former information type "(C)" redesignated as information type "(E)" and former information type "(D)" divided into two new information types, "(F)" for Searches performed in electronic journals and electronic books available to examiners on their desktop through the STIC NPL website and "(I)" for Nonelectronic searches of publications in paper form. The content from former subsection II.D is now information type (G). The content from former subsection II.C is now information type (H).

    —Subsection III is a new subsection directed to conducting and recording the Interference Search. Former subsection III, directed to "Information Not Recorded in the Application File," has been redesignated as subsection IV.

    720

    —Added the website address for accessing the August 2012 revision of the MPEP.

    724.04

    —Deleted references to the IFW Manual.

    724.05

    —Revised subsection III to add "[h]owever, if the papers are correctly matched with the application serial number given in an electronic filing via EFS-WEB, the information is not considered to have been submitted in the incorrect application even if the identifying information in the heading of the papers is directed toward a different application."

    [top]

      

    CHAPTER 800:

    Passim

    —Revised "obviousness-type double patenting" or "ODP" to "nonstatutory double patenting" or "NDP" to reflect current terminology.

    801

    —Revised to add cross-reference to MPEP § 823 for guidance on matters set forth in MPEP Chapter 800 that apply to national stage applications submitted under 35 U.S.C. 371. Paragraph added to indicate that the general principles of this chapter, with certain exceptions, apply to design applications, reissue applications, and reexamination proceedings and to provide cross-references to MPEP sections for additional information.

    802

    —Revised the title of the section and the first sentence to clarify that the section is limited setting forth the basis for restriction practice.

    803.01

    —Added a cross-reference to MPEP § 804.01.

    803.04

    —Revised to indicate that in 2007, the Office rescinded the 1996 partial waiver of the requirements of 37 CFR 1.141 et seq. with regard to restriction requirements in certain applications claiming polynucleotide molecules. Added that for national applications filed under 35 U.S.C. 111(a), polynucleotide inventions will be considered for restriction, rejoinder, and examination practice in accordance with the standards set forth in MPEP Chapter 800. Deleted text discussing the guidance provided in the Official Gazette notice regarding the1996 partial waiver.

    803.05

    —New section added to explain policies and procedures for restriction practice in reissue applications.

    804(Passim)

    —Revised text throughout the section to add "common applicant" to the situations in which double patenting rejections may be applicable.

    —Modified text throughout the section to refer to both the current statutory provisions for common ownership and joint research agreement (35 U.S.C. 102(b)(2)(C) and 102(c), respectively) and the prior statutory provisions as amended by the CREATE Act (pre-AIA 35 U.S.C. 103(c)).

    804

    Pertaining to introductory text and double patenting charts:

    —In the introductory text, added a citation to Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 110 USPQ2d 1551 (Fed. Cir. 2014).

    —In the introductory text, added preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention to the purposes underlying the doctrine of nonstatutory double patenting.

    —Added explanation that a nonstatutory double patenting rejection may be based on an anticipation analysis, an "obviousness" analysis that is similar to, but not necessarily the same as, that undertaken with regard to 35 U.S.C. 103, or equitable principles.

    —Revised the double patenting charts for consistency with the AIA. Specifically, the charts cover when two applications have claims to the same invention (Charts I-A) or to patently indistinct inventions (Charts I-B) and when an application and a patent have claims to the same invention (Charts II-A) or to patently indistinct inventions (Charts II-B). One set of four charts apply when the application being examined is subject to the first to invent (FTI) provisions and a second set of four charts apply when the application being examined is subject to the first inventor to file (AIA) provisions. Added text to explain the revisions to the charts, including certain possible rejections that the charts do not address.

    804

    Pertaining to subsection I. Instances Where Double Patenting Issue Can be Raised:

    —In subsection I.A, added a citation to In re Hubbell, 709 F.3d 1140, 106 USPQ2d 1032 (Fed. Cir. 2013), which indicates that complete identity of ownership or inventive entities is not required in order for nonstatutory double patenting rejection to apply.

    —In subsection I.B, second paragraph, deleted "unless that 'provisional' double patenting rejection is the only rejection remaining in at least one of the applications" and inserted "except as noted below" in its place. In subsections I.B.1 and I.B.2, added "Provisional" to the subsection title and completely rewrote the text to set forth procedures that are consistent with current practice as set forth in MPEP § 1490.

    —In subsection I.D, first paragraph, added "same" before "issue" in the last sentence for clarification.

    804

    Pertaining to subsection II. Requirements of a Double Patenting Rejection (Including Provisional Rejections):

    —In subsection II, second paragraph, deleted "substantively" before "the same" in the first sentence for clarification. Revised the list of determinations to be made with regard to the proper basis for a double patenting rejection to reorder the items and to added "nonstatutory" before "double patenting rejection" in the context of determining whether a rejection is prohibited by the third sentence of 35 U.S.C. 121. Added citation to AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014).

    —In subsection II.A, revised the examiner notes in form paragraphs 8.31 and 8.32, to conform with current terminology and to clarify guidance for applications being examined under pre-AIA (first to invent) law and for applications being examined under the first inventor to file provisions of the AIA.

    —In subsection II.B, at the end of the first paragraph, added preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention as a public policy basis for nonstatutory double patenting rejections. Deleted subsection heading "1. Obviousness Type" and rewrote text previously thereunder in new subsections II.B.1 and II.B.2. The text in former subsection II.B.2

    —Added new subsection II.B.1, entitled "Anticipation Analysis," to explain when an anticipation analysis should be used to explain the basis for a nonstatutory double patenting rejection. The added text specifically discusses policies in regard to species and sub-genus claims. Added citation to AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014) to support the statement that an obviousness analysis is required if one of ordinary skill in the art is not able to at once envisage the invention claimed within the scope of the genus claims of the conflicting application or patent.

    —Redesignated former subsection II.B.1 as subsection II.B.2. Obviousness Analysis. Revised to explain issues to be considered when determining the propriety of a nonstatutory double patenting rejection based on an obviousness analysis. Clarified text to explain that the specification of the applied patent or copending application may be used to interpret the applied claims, even though the specification is not prior art. Added citations to Geneva Pharmaceuticals, 349 F.3d at 1378 n.1, 68 USPQ2d at 1869 n.1 (Fed. Cir. 2003) and In re Basell Poliolefine, 547 F.3d 1371, 1379, 89 USPQ2d 1030, 1036 (Fed. Cir. 2008) to support the statement that the nonstatutory double patenting analysis is similar to, but not necessarily the same as, the analysis under 35 U.S.C. 103.

    —Added new subsection II.B.2(a), entitled "Construing the claim using the reference patent or application disclosure." Revised the former text discussing use of the reference disclosure to clarify the proper use of the specification for claim construction. Included supporting citations to Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc); AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); and Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC , 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003). Specifically, added new text to clarify procedures and help to avoid improper reliance on the disclosure of a reference patent or copending application. In addition, the result in In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968) is discussed to avoid improper application of double patenting rejections based on Schneller.

    —Relocated the text of former subsection II.B.1(a) to subsection II.B.2(b) One-Way Test for Distinctness. Revised text to use "distinctness" in place of "obviousness" to emphasize that a double patenting analysis is different from an obviousness analysis under 35 U.S.C. 103. In the first paragraph, deleted text drawn to "obvious-type" double patenting and anticipation from the last two sentences. In the second paragraph, added references to In re Hubbell, 709 F.3d 1140, 106 USPQ2d 1032 (Fed. Cir. 2013) and In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986). In the third paragraph, changed "an unjustified timewise extension rationale" to "equitable principles" to conform with current terminology. Moved form paragraphs 8.33 to 8.37 from former subsection II.B.2(b) to this subsection. Revised form paragraph 8.33 to improve clarity and revised the examiner notes in form paragraphs 8.34 to 8.37 to conform with current terminology and to clarify policies under the first to invent law and first inventor to file law.

    —Relocated the text of former subsection II.B.1(b) to added subsection II.B.2(c) Two-Way Test for Distinctness. In the first paragraph, added a citation to In re Hubbell, 709 F.3d 1140, 106 USPQ2d 1032 (Fed. Cir. 2013) to support that the Office must solely be responsible for delays to be entitled to a two-way test for distinctness. In the second paragraph, clarified the procedures in making a two-way distinctness determination and changed "the fundamental reason … by a patent" with "equitable principles" to conform with current terminology. Added a new paragraph that discusses the unusual facts of In re Braat. In the last paragraph, changed "an unjustified timewise extension rationale" to "equitable principles" to conform with current terminology. Form paragraphs 8.33 to 8.47 were moved to current subsection II.B.2(b).

    —Redesignated former subsection II.B.2 as subsection II.B.3. Nonstatutory Double Patenting Rejection Based on Equitable Principles. In the first paragraph, revised text to clarify that double patenting rejections based on equitable principles are intended to prevent unjustified timewise extension of patent rights, no matter how the extension is brought about. Added a supporting citation to Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003) and a new paragraph discussing that decision. Made conforming changes through the subsection by referring to "equitable principles" rather than "unjustified timewise extension of patent rights rationale" as the basis for such nonstatutory double patenting rejections. Revised the examiner notes in form paragraphs 8.38 and to 8.39, to conform with current terminology and to clarify guidance for applications being examined under pre-AIA (first to invent) law and for applications being examined under the first inventor to file provisions of the AIA.

    —Redesignated former subsection II.B.3 as subsection II.B.4. Revised text to use "distinctness" in place of "obviousness" to emphasize that double patenting analysis is different from obviousness analysis under 35 U.S.C. 103. In the second paragraph, clarified text regarding double patenting in a design-utility situation. Deleted "But see Carman Indus. (J. Nies, concurring)."

    804

    Pertaining to subsection III. Contrast Between Double Patenting Rejection and Rejections Based on Prior Art:

    —In subsection III, changed the citation of "35 U.S.C. 103(a)" to "35 U.S.C. 102 or 103" and "obviousness analysis" to "anticipation or obviousness analysis" because double patenting may be evaluated either an anticipation or obviousness analysis. In the first paragraph, added a quotation from In re Bartfeld.

    —In the second paragraph, replaced the citation to the In re Bowers CCPA decision with a citation to In re Heck, 699 F.2d 1331, 216 USPQ 1038 (Fed. Cir. 1983).

    —In the third paragraph, added "even though it may overcome a nonstatutory double patenting rejection" at the end of the first sentence to clarify that this paragraph is limited to nonstatutory double patenting, and replaced the citation of In re Fong with a citation to In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). Added a citation to Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 86 USPQ2d 1110 (Fed. Cir. 2008) for an example of the purpose of a terminal disclaimer.

    804

    Pertaining to subsection IV. Double Patenting Rejections and Prior Art Exclusion under Pre-AIA 35 U.S.C. 103(c):

    —Added new subsection IV, which contains modified text from former subsection III. Added "pre-AIA" before statutory citations to 35 U.S.C. 102 and 103 for clarification. Deleted the clause "and for reexamination proceedings in which the patent under reexamination was granted on or after December 10, 2004" as unnecessary. Added cross-references to MPEP § 706.02(l) and the charts in this section.

    804

    Pertaining to subsection V. Double Patenting Rejections and Prior Art Exception under 35 U.S.C. 102(b)(2)(C) and 102(c):

    —Added new subsection V, which contains new text to briefly discuss policies regarding double patenting rejections and the prior art exception under 35 U.S.C. 102(b)(2)(C) and 102(c).

    804

    Pertaining to subsection VI. Double Patenting Rejections Once a Joint Research Agreement is Established:

    —Added new subsection VI, which contains modified text from the last paragraph of former subsection III. Text was revised to clarify that this subsection (pertaining to joint research agreements) applies to both pre-AIA and AIA law and to clarify whether the statutory citations are to pre-AIA or AIA law. Also, minor clarifying changes to the text were made.

    804.01

    —Revised text to clarify that the prohibition under 35 U.S.C. 121 applies to nonstatutory double patenting and does not apply to statutory double patenting. In the first paragraph, added discussion of, and citation to, Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008). Added text that discusses the court's interpretation of the double patenting prohibition in Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003) and Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 40 USPQ2d 1481 (Fed. Cir. 1996).

    —In the third paragraph, added "independent or distinct inventions, such as" after "restriction between" in the first sentence for clarification. In item (A), clarified the language by moving qualifying phrases to a different location in the same sentence. In item (B), clarified the first sentence by changing "different applications or patents" to "application under examination and claims of the other application/patent."

    —In item (C), clarified the language by adding "requirement was withdrawn because the" after "restriction" in the first sentence and deleting the second sentence. In item (D), added a new second sentence to emphasize that the prohibition against double patenting rejections to apply to national stage applications. In item (E), added "in its entirety, or in part" after "withdrawn" in the first sentence and changed "third sentence" to "[double patenting]" in the second sentence for clarification. Added new text to explain the effect of withdrawing a restriction requirement and to add a supporting quote from In re Ziegler.

    —In item (F), added text to state that the 35 U.S.C. 121 prohibition against double patenting is not applicable to statutory double patenting with supporting citations to Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). In item (G), clarified the text in the last sentence that if any process claims are rejoined, the restriction requirement should be withdrawn in accordance with 37 CFR 1.141(b) and MPEP § 821.04.

    —Added new item (H) to explain that continuation-in-part (CIP) applications do not qualify for the 35 U.S.C. 121 prohibition against double patenting, including a supporting citation to Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-08 (Fed. Cir. 2008).

    —Rewrote the first sentence of the last paragraph to improve clarify by relocating qualifying phrases.

    804.02

    —Modified the citation of "37 CFR 1.131" to "37 CFR 1.131(a)" and revised text to clarify that a terminal disclaimer can obviate a "nonstatutory" double patenting rejection.

    —In subsection II, added text to state that 35 U.S.C. 101 prevents two patents from issuing on the same invention and added supporting citations to Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). Revised the cross-reference to "35 U.S.C. 102(e)/103(a)" to "35 U.S.C. 102 or 103" to include both pre-AIA and AIA versions of the statutes.

    —Added a new paragraph to discuss the consonance requirement, including supporting citations to Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003), Symbol Techs, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991), and Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 40 USPQ2d 1481 (Fed. Cir. 1996).

    —In subsection IV, corrected "application date" to read "expiration date" in the first sentence. Also, changed "rejection" to "judicially created double patenting" in the last sentence of the second paragraph to make the quoted language consistent with the current text of 37 CFR 1.321(c)(3). Changed "ownership" to "separate enforcement" in the first sentence of the last paragraph to make the language consistent with 37 CFR 1.321(d).

    —In subsection VI, added citations to 35 U.S.C. 386(c), where appropriate. In the first paragraph, added a citation to 35 U.S.C. 156 following 35 U.S.C. 154(b) to clarify that certain patent term adjustments and extensions effect the patent term. Also added explanation that in certain situations copending applications will have the same effective filing date and may potentially have the same patent term. In the second paragraph, changed "extension" to "adjustment" to make the terminology consistent with 35 U.S.C. 154(b), and added text to explain the interplay between terminal disclaimers and patent term adjustment under 35 U.S.C. 154(b). Also added explanation that 37 CFR 1.321(d) limits enforcement of the patent to only when the patent and the reference application or patent are not separately enforced, and that a terminal disclaimer is only effective in the application in which it is filed. In the third paragraph, updated the citation to a 1997 Official Gazette notice with more complete identifying information and added a supporting citation to AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014). Added a new fourth paragraph to subsection VI indicating that a terminal disclaimer may be withdrawn if the conflicting claims are cancelled or shown to be patentably distinct from the reference claims.

    804.03

    —Added 35 U.S.C. 102(b)(2)(C) and (c). Revised the title of 35 U.S.C. 103(c) to indicate that it is the pre-AIA version. Replaced former 37 CFR 1.78(c) with current 37 CFR 1.78(g) and replaced former 37 CFR 1.130 with current 37 CFR 1.131(c) to provide the regulatory sections relevant to the discussion in the this MPEP section. Revised text to clarify that a terminal disclaimer can obviate a "nonstatutory" double patenting rejection.

    —Modified text to refer to both the current statutory provisions for common ownership and joint research agreement (35 U.S.C. 102(b)(2)(C) and 102(c), respectively) and the prior statutory provisions as amended by the CREATE Act (pre-AIA 35 U.S.C. 103(c)) and other conforming changes (e.g., updating form paragraph references and using "effective filing date" instead of "when the invention was made").

    —In subsection I, deleted the reference to Public Law 108-453. Also updated cross-references to other MPEP sections that contain more information on common ownership and joint research agreements.

    —In subsection II.A, added text from MPEP § 706.02(l)(2) to define common ownership and added cross-references to MPEP 717.02(a) and (b) for more information on the prior art exception based on common ownership. In subsection II.B, added text at the end to discuss the differences between the joint research agreement provisions of 35 U.S.C. 102(c) and pre-AIA 103(c). In subsection II.C, added "may be made final" to the end of the last sentence.

    —In subsection III, clarified text in the second paragraph to conform with current terminology.

    —In subsection IV, updated all form paragraphs to conform with current terminology.

    804.04

    —In the first paragraph, added "nonstatutory" before "double patenting" for clarification and deleted "or continuing" because the 35 U.S.C. 121 prohibition against double patenting is only applicable to divisional applications.

    —Added new paragraphs to further explain the 35 U.S.C. 121 prohibition against double patenting, including support citations to Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003), Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 40 USPQ2d 1481 (Fed. Cir. 1996), and Symbol Techs, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991).

    805

    —Changed "void" to "invalid" to be consistent with current terminology in the last sentence.

    806.04(i)

    —Revised section title and modified text to refer to both the current statutory provisions for common ownership and joint research agreement (35 U.S.C. 102(b)(2)(C) and 102(c), respectively) and the prior statutory provisions as amended by the CREATE Act (pre-AIA 35 U.S.C. 103(c)). Made minor clarification changes to the first sentence.

    809.03

    —Updated the cross-reference from MPEP § 818.03(d) to MPEP § 818.01(d).

    810

    —Changed the period for reply from "1-month (not less than 30 days)" to "2 months." Deleted "or election" after "restriction" for clarification. Deleted the clause "When preparing … the restriction requirement" and inserted text to more fully explain making a restriction requirement final.

    811

    —In the second paragraph, made clarifying changes that the examiner must consider whether there is a serious burden before requiring a restriction of claims previous examined on the merits.

    812.01

    —Revised the order of the text and made minor revisions thereto for clarity. References to "documentation" and "the next Office action" reflect updates to use current terminology.

    814

    —In subsection I, added "if necessary" after "mentioned" for clarification and added cross-references to form paragraphs 8.01 and 8.02. In subsection III, added "linked" before "invention" for clarification.

    817

    —Revised the text in the paragraph following form paragraph 8.11 for clarification. Added new subitem (v) under item (C)(2) regarding the process of making and process of using.

    —Updated form paragraph 8.21 and revised text to indicate that only form paragraph 8.21 must be used at the conclusion of all restriction requirements. Deleted form paragraphs 8.21.01-8.21.03. Added form paragraphs 8.27.aia and 8.28.aia.

    818

    —Deleted text of section except for the first sentence, and added "by applicant" following "designation" in the first sentence for clarification. Added a new paragraph to discuss when two or more independent and distinct inventions are presented, and to discuss the restriction process. Added text from former MPEP § 818.01. In addition, added a sentence about inventions elected by original presentation with a cross-reference to MPEP § 818.02(a).

    818.01

    —Revised section title to "Election in reply to a restriction requirement," and added text from former section MPEP § 818.03, modified for clarity.

    —Added two new paragraphs to state the requirements for traversing a restriction requirement and to explain that where a rejection or objection is included with a restriction requirement, applicant must respond to all rejections and objections in addition to the restriction requirement.

    818.01(a)

    —New section added that contains modified text from former MPEP § 818.03(a). In the first paragraph, text was modified by adding "for restriction" after "requirement" in the first sentence and deleting all text after "37 CFR 1.111(b)." In the second paragraph, text was modified by changing the cross-reference from MPEP § 818.03(b) to MPEP § 818.01(b) and adding "if accompanied by an incomplete traversal of the requirement for restriction" at the end of the last sentence.

    818.01(b)

    —New section added that contains modified text from former MPEP § 818.03(b). In the second paragraph, text was revised to add "other than those containing only an election of species" after "restriction" and to refer to form paragraph 8.21 instead of 8.22. Deleted form paragraph 8.22. Added a paragraph that for election of species, form paragraph 8.01 or 8.02 should be used.

    818.01(c)

    —New section added that contains modified text from former MPEP §§ 818.03(a) and 818.03(c). Added text explaining that a traversal must point out all errors in order to preserve petition rights, and that the petition may be deferred until after final action but no later than the filing date of a notice of appeal.

    818.01(d)

    —New section added that contains modified text from former MPEP § 818.03(d). Text from former MPEP § 818.03(d) was revised to combine the text into a single paragraph and to clarify that regardless of the presence of a linking claim, a proper traverse must include a written statement of the reasons for traverse, including distinctly and specifically pointing out supposed errors in the restriction requirement.

    818.02

    —Text is revised by changing "expressly" to "by explicitly or expressly identifying the elected invention or" and by adding a cross-reference to MPEP § 818.02(d).

    818.02(a)

    —Section title is modified by adding "Election" at the beginning. In the first paragraph, text is revised by changing "an action is given, they are treated as original claims" to "the earlier of the mailing of a first restriction requirement or the mailing of a first Office action on the merits, those claims, along with ones presented upon filing the application, will be considered as originally presented claims." A cross reference to MPEP chapter 1400 is added for reissue applications.

    818.02(b)

    —Section title is modified by adding "; Linking Claims Only – No Election of Invention" and by adding text indicating that where only linking claims are first presented and prosecuted in an application in which no election of a single linked invention has been made, and applicant later presents claims to two or more linked, independent or distinct inventions, the examiner may require applicant to elect a single invention.

    818.02(c)

    —Section title revised by adding "Election." Added "independent or distinct" prior to "inventions," deleted "(which may be species or various types of related inventions)," and made minor changes to clarify the text.

    818.02(d)

    —New section added to explain that when applicant's reply to a restriction requirement does not expressly state the invention elected, but cancels claims to all but one invention, the remaining invention is deemed to be the elected invention.

    818.03 et seq.

    —Sections removed and reserved; text previously therein was modified and moved to MPEP § 818.01 et seq. as discussed above.

    819

    —In the first paragraph, minor changes to text made for clarification and to add a cross-reference to MPEP § 706.07(h), subsection IV.B.

    —In the second paragraph, reorganized the order which the information is presented and qualified the discussion of continued prosecution applications as limited to design applications (but not international design applications).

    —Delete text regarding interference and allowable genus claims. Added a new paragraph stating that an applicant, as a matter of right, may not shift from claiming one invention to another but an examiner is not precluded from permitting a shift.

    821

    —Deleted the second paragraph and moved the citation of In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971) to the end of the final paragraph.

    821.01

    —Minor clarifying changes are made to the first paragraph. Text surrounding form paragraphs 8.25 and 8.05 rearranged and clarified to explain that if a restriction requirement is made final, the claims to the nonelected invention should be clearly indicated as being withdrawn from consideration.

    —Deleted form paragraph 8.24 and text that indicated a complete reply to a final rejection must include cancellation of claims nonelected with traverse or other appropriate action because even after final rejection, the withdrawn claims to the non-elected invention might properly be rejoined. Deleted the second to last paragraph that states that the failure to cancel claims drawn to the nonelected invention in a reply to a final action that otherwise places the application in condition for allowance will be taken as an authorization to cancel claims not eligible for rejoinder or to take appropriate action.

    —In the last paragraph, clarified that "not later than appeal" means on or before the date of notice of appeal is filed and added a cross-reference to MPEP § 1204.

    821.02

    —In the first paragraph, revised text to clarify that where the initial requirement is not traversed (either expressly or by virtue of an incomplete reply), the examiner should take appropriate action, including determining whether the restriction requirement should be withdrawn in whole or in part. Also added a cross-reference to MPEP § 821.04. Added a sentence indicating when form paragraph 8.07 should be used.

    —Added explanation that even if an election was made without traverse, claims directed to nonelected species and nonelected inventions that are eligible for rejoinder should be rejoined; if not rejoined, such claims may only be cancelled by examiner's amendment when the cancellation is expressly authorized by applicant.

    821.03

    —In the first paragraph, deleted the cross reference to MPEP § 818.01 and made minor clarification changes. Revised form paragraph 8.26 to provide a two month time period for reply, and to add an examiner note indicating that the form paragraph should not be used for an application filed on or after August 25, 2006 that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d).

    821.04(a)

    —Revised form paragraphs 8.03 and 8.47 to provide a two month time period for reply.

    822

    —Revised section title to "Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee."

    —Replaced former 37 CFR 1.78(b) with current 37 CFR 1.78(f), which relates to the treatment of applications containing patentably indistinct claims, and updated form paragraph 8.29 to cite to 37 CFR 1.78(f). Added brief discussion of appropriate rejections that should be made when claims in two or more applications filed by the same applicant or assignee are patentably indistinct.

    —Added cross-references to MPEP §§ 804.01 and 1490 for additional information pertaining to provisional double patenting rejections.

    822.01

    —Section deleted in its entirety. See MPEP § 822 for information pertaining to the treatment of applications containing patentably indistinct claims.

    823

    —Revised to explain that the analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis), however the guidance set forth in MPEP Chapter 800 with regard to other substantive and procedural generally applies to national stage applications submitted under 35 U.S.C. 371.

    [top]

      

    CHAPTER 900:

    Passim

    —Revised to add "pre-AIA" to references to 35 U.S.C. 102(a), 35 U.S.C. 102(e), 35 U.S.C. 102(g)(1), 35 U.S.C. 104, 35 U.S.C. 135(a), 35 U.S.C. 135(b), and 35 U.S.C. 154(b)(1)(C). Revised to replace references to "35 U.S.C. 112, first paragraph" with "35 U.S.C. 112(a)" and "35 U.S.C. 112, second paragraph" with "35 U.S.C. 112(b)."

    901.01

    —Revised to indicate that matter canceled from the application file wrapper of a U.S. patent or U.S. patent application publication is publicly available, e.g., for purposes of 35 U.S.C. 102(a)(1), as of the patent or publication date, respectively.

    901.01(a)

    —New section added regarding ordering patented and abandoned provisional and nonprovisional application files. Revises information previously in MPEP § 905.03 for consistency with current practices.

    901.02

    —Revised to include discussion of relevant AIA provisions under 35 U.S.C. 102.

    901.03

    —Revised to include information regarding the non-publication of international design applications filed under 35 U.S.C. 382. Revised to include discussion of use of U.S. patent application publications under AIA 35 U.S.C. 102.

    901.04

    —Revised to add cross-reference to MPEP § 2154.

    901.05

    —Revised to delete previous subsection I, Placement of Foreign Patent Equivalents in the Search Files; renumbered the remaining subsections.

    —Revised to update information regarding Scientific and Technical Information Center (STIC) commercial database offerings including Derwent World Patents Index, International Patent Documentation Center, and Chemical Abstract Service. Information regarding the STIC microfilm collection updated.

    901.05(a)

    —Revised to delete the alphabetical lists of the foreign language names of the months and of the names and abbreviations for the United States of America.

    901.05(c)

    —Revised to provide updated guidance on utilizing STIC to obtain copies of foreign patent documents.

    901.05(d)

    —Revised to update information about using STIC Translations Service Center to obtain human (written) or machine translations of non-patent literature and foreign patent documents, and to include a link to the STIC's listing of machine translation tools. Added cross-reference to MPEP § 706.02 relating to the use of machine translations where possible in the early phases of examination.

    901.06(a)

    —Revised to update information regarding the location of main STIC and the STIC-Electronic Information Centers (STIC-EICs), which are found in each of the Technology Centers.

    —Revised to update information regarding STIC collections, including books (electronic and print), periodicals, and special collections. Also revised to update information regarding locating materials in the STIC online catalog, and receiving loaned books from STIC.

    —Revised to update information on STIC services, including performing online searches using commercial databases, foreign patent document retrieval, document translation, and interlibrary loans.

    901.06(c)

    —Revised to add reference to a database that includes information on U.S. Alien Property Custodian bibliographic data.

    901.06(d)

    —Revised to specify that requests for statutory invention registration filed on or after March 16, 2013, will not be processed in light of the repeal of pre-AIA 35 U.S.C. 157.

    901.07

    —Section rewritten in its entirety, and previous information pertaining to arrangement of art in technology centers deleted.

    —Section title revised to "Patent Family Information" and text rewritten to include information previously in MPEP § 905.06 regarding accessing patent family information. Additionally updated to include information about the Common Citation Document website accessible through the Patent Examiner's Toolkit.

    901.08

    —Section removed and reserved.

    902

    —Revised to include information regarding classification systems. Revised to indicate that U.S. Patent Classification (USPC) System will become a static searchable database after December 31, 2014.

    902.01

    —Section title revised to "Classification Manual for the U.S. Patent Classification System," and text revised to indicate that the classification manual for the U.S. Patent Classification System will no longer be updated after December 31, 2014. Removed reference to bimonthly Manual updates and portable document format (.pdf) archiving on CD-ROM.

    902.02

    —Revised section title to pertain to class and subclass definitions in the USPC.

    902.02(a)

    —Revised section title to pertain to definition notes in the USPC.

    902.03

    —Revised to indicate that a majority of U.S. Patents and U.S. Patent Application Publications published after December 31, 2014, will no longer receive a designated U.S. patent classification.

    902.03(b)

    —Revised to replace "IPC8" with "IPC."

    902.03(c)

    —Section removed and reserved.

    902.03(d)

    —Section removed and reserved.

    902.04

    —Deleted.

    902.04(a)

    —Deleted.

    903

    —Revised section title to pertain to classification in the USPC.

    903.02(a)

    —Section removed and reserved.

    903.02(b)

    —Revised section title to pertain to scope of a class in the USPC.

    903.02(c)

    —Deleted.

    903.03

    —Revised to provide information about the Foreign Patents Service Center, which assists examiners in foreign patent data retrieval, patent family searches and document retrieval services for non-patent literature in the STIC collections.

    903.04

    —Revised section title to pertain to classifying applications for publication as a patent application publication in the USPC.

    903.06

    —Revised to delete reference to subclasses being regularly populated with documents from the EPO and JPO databases.

    903.07

    —Revised to reflect the current practice of electronic processing.

    903.07(b)

    —Deleted.

    903.08

    —Revised to delete form paragraph 5.03 and the indication that applicants may be advised of expected application transfers by use of the form paragraph.

    903.08(a)

    —Revised to delete indication that the SPE or a designee reviews each application to determine whether it belongs in the art unit.

    903.08(c)

    —Deleted outdated information regarding classification and assignment of applications filed under the Patent Cooperation Treaty (PCT).

    903.08(d)

    —In subsection II, deleted any distinction between the treatment of PCT, docketed, and undocketed applications in the context of application transfers.

    —Subsection III revised to delete references to eDAN messaging, to change "PALM EXPO" to "Patent File Wrapper (PFW)," and to delete the phrase "examinable in another TC" from identification of the controlling claim for the purposes of the application transfer request form. Subsection III further revised to delete information regarding handling of PCT applications and other special applications throughout the transfer process.

    903.08(e)

    —Revised the list setting forth how an application will be assigned by deleting reference to reclassification of entire classes from item (E), deleting former item (H) and redesignating former items (I-M) as items (H-L).

    —Subsection I retitled "Routing of Applications Transferred Between TCs" and revised to remove references to undocketed applications and eDAN messaging. Replaced "PALM EXPO" with "Patent File Wrapper (PFW)."

    —Subsection II retitled "Patent File Wrapper"; references to PALM EXPO transfer inquiry function and routing sheet deleted.

    903.09

    —Section removed and reserved; moved information to new MPEP § 906.

    903.09(a)

    —Section removed and reserved; moved information to new MPEP § 907.

    904

    —Revised to update discussion of a second search of the prior art following the first Office action.

    904.02

    —Revised to replace references to Information Technology Resource Person (ITPR) and Scientific and Technical Information Center (STIC) with Electronic Information Center.

    904.02(a)

    —Revised to include classified searching in the Cooperative Patent Classification system.

    904.02(b)

    —Updated to reflect that an NPL search may be performed by the examiner or by using a STIC-EIC searcher.

    904.02(c)

    —Revised to update guidance on the use of the Internet as an examination search tool.

    905

    —Revised to include general introduction of the cooperative patent classification (CPC) system.

    905.01

    —Revised to include explanation of the classification scheme for CPC, including specifics about each element of the classification symbol.

    905.01(a)

    —New section added to explain that the title associated with CPC symbols defines the scope of the subject matter covered by that symbol.

    905.01(a)(1)

    —New section added to explain references within CPC titles.

    905.01(a)(2)

    —New section added to explain significance of notes following a CPC class, subclass, main group or subgroup title.

    905.01(a)(3)

    —New section added to explain presence of warnings found within CPC schemes.

    905.01(a)(4)

    —New section added to explain guidance headings found in CPC schemes.

    905.02

    —Revised to explain CPC definitions.

    905.03

    —Rewritten to provide guidance on classification rules in the CPC classification system. Information regarding ordering patented and abandoned provisional and nonprovisional application files relocated to new MPEP § 901.01(a).

    905.03(a)

    —New section added containing information on the CPC database, which maintains technical information regarding the patent family documents for each patent included and associated CPC classification symbols.

    905.03(b)

    —New section added providing guidance on what subject matter to classify in the CPC classification scheme.

    905.03(c)

    —New section added providing guidance on searching using CPC combination sets.

    905.04 - 905.06

    —Deleted. Content formerly in MPEP § 905.06 moved to MPEP § 901.07.

    906

    —New section added containing updated information previously found in MPEP § 903.09 regarding the International Patent Classification system. Information pertaining to update of the Concordance was deleted.

    907

    —New section added containing information previously found in MPEP § 903.09(a) regarding the Locarno International Classification system. Content revised to indicate that international design applications include a Locarno international classification designation.

    [top]

      

    CHAPTER 1000:

    1001

    —Updated 35 U.S.C. 2 and 3.

    1001.01

    —Revised to add material emphasizing the distinction between appealable matters and petitionable matters.

    1002

    —Added 37 CFR 1.4(c) and updated 37 CFR 1.181 – 1.183.

    —Revised to list four elements that should be included in a petition.

    —Revised to include a paragraph directed to the requirement of 37 CFR 1.4(c) for a separate paper/petition for each distinct subject, inquiry or order to avoid confusion and delay in answering the petition. Added an indication that many prior petitioners have benefitted by delaying the filing of petitions under 37 CFR 1.182 or 1.183 until after they receive a decision on a petition seeking supervisory review under 37 CFR 1.181.

    —Deleted a reference to 37 CFR 1.644.

    —Added form paragraph 10.30.

    1002.01

    —Revised to delete the last paragraph of the section, which was directed to notations made on the "Contents" of paper application file wrappers.

    1002.02

    —Revised to include a reference to MPEP § 1002.02(p).

    1002.02(b)

    —Revised the first paragraph to delete reference to petitions decided by PCT Legal Administration, to update the Mail Stop for applications for patent term extension under 35 U.S.C. 156, and to add the Mail Stop for petitions for retroactive foreign filing license under 37 CFR 5.25.

    —In item 1, removed reference to petitions to revive based on unavoidable delay. In item 4, changed 37 CFR "1.55(c)" to "1.55(e)" and MPEP § "201.14(a)" to "214.02." Added item 5 directed to petitions to restore the right of priority under 37 CFR 1.55(c). Added item 6 directed to petitions for the late filing of priority papers under 37 CFR 1.55(f). Renumbered former item 5 as item 7, changed "priority" to "benefit," changed 37 CFR "1.78(a)(3) and (a)(6)" to "1.78(c) and (e)," and changed MPEP § "201.11" to "211.04." Added item 8 directed to petitions to restore a domestic benefit claim under 37 CFR 1.78(b) or (e).

    —Renumbered former items 6-8 as 9-11, respectively. In former item 7 (renumbered as item 10), added "subsection I" after "MPEP § 711." In former item 8 (renumbered as item 11), deleted "assignments and" and added ", for example, issuance of a patent in the name of an assignee under 37 CFR 3.81" after "provided for." Deleted former item 9. Renumbered former items 10-21 as 12-23, respectively. In former item 10 (renumbered as item 12), added "or agent of record" after "attorney" and "and in applications pending in a Technology Center" after "Policy." In former item 12 (renumbered as item 14), changed "[r]equests by the examiner to the Board of Patent Appeals and Interferences for reconsideration of a decision" to "[r]equests from the examiner for the rehearing of a decision of the Patent Trial and Appeal Board." In former item 14 (renumbered as item 16), added "an unintentionally" before "delayed payment." In former item 15 (renumbered as item 17), added "or Central Reexamination Unit Director" after "Technology Center Director."

    —In former item 18 (renumbered as item 20), deleted "unavoidable or" and the reference to 35 U.S.C. 133. In former item 19 (renumbered as item 21), added "(or pre-AIA 37 CFR 1.14)" after "37 CFR 1.14." Renumbered former items 20 and 21 as items 22 and 23. Deleted former item 22. Renumbered former item 23 as item 24 and revised it to read "[a]pplications relating to Hatch-Waxman patent term extension, 37 CFR 1.710 - 1.791 and petitions relating to Hatch-Waxman patent term extension, 37 CFR 1.182 or 1.183." In former item 24 (renumbered as item 25), added "for original applications, other than designs, filed on or after June 8, 1995 and before May 29, 2000, MPEP § 2720." In former item 25 (renumbered as item 26), added a cross-reference to MPEP § 2734, subsection I. In former item 26, (renumbered as item 27), added a cross-reference to MPEP § 2734, subsection II. In former item 27 (renumbered as item 28), deleted references to former 37 CFR 1.60 and former 37 CFR 1.62. Added item 32, "[p]etitions, or requests at the initiative of the USPTO by someone other than a Technology Center Director, to withdraw patent applications from issue under 37 CFR 1.313(a) before payment of the issue fee." In former item 32 (renumbered as item 33), added "subsection II" after "MPEP § 1308." In former item 33 (renumbered as item 34), added a cross-reference to MPEP § 1308, subsection I.B. In former item 34 (renumbered as item 35), added "or assignment information."

    —Added new items 36-48. Item 42, directed to petitions for retroactive foreign filing license, was formerly item 7 of MPEP § 1002.02(c)(1). Item 48, directed to the return of papers containing discourteous remarks, was formerly item 3 of MPEP § 1003.

    1002.02(c)

    —In item 2, revised the language addressing lack of unity in international applications to refer to "protests following a holding of lack of unity of invention by the USPTO in its capacity as International Searching Authority ( 37 CFR 1.477 and MPEP § 1850 ) or International Preliminary Examining Authority (37 CFR 1.489 and MPEP § 1875.02)."

    —In item 3, deleted former sub-items (b) and (e) and relabeled sub-items (c), (d), and (f)-(j) as b-h, respectively. In former sub-item (d) (relabeled as sub-item c), changed 37 CFR "1.131" to 37 CFR "1.131(a)" and deleted references to 37 CFR 1.608 and MPEP § 2308 -§ 2308.02. In former sub-item (h) (relabeled as sub-item f), added a cross-reference to MPEP § 714.01(e). In former sub-item (j) (relabeled as sub-item h), MPEP § "704.11" was changed to "704.14(c)."

    —Items 5 and 9 were deleted and items 6-8 and 10-21 were renumbered as 5-19, respectively. In former item 7 (renumbered as item 6), "[p]etitions under 37 CFR 1.193(a) relating to the form of the appeal" was changed to "[p]etitions under 37 CFR 41.40 to request review of the primary examiner's failure to designate a rejection in the examiner's answer as a new ground of rejection, MPEP § 1207.03(b)." In former item 8 (renumbered as item 7), MPEP § "1206" was changed to "1205.01." In former item 11 (renumbered as item 9), a cross-reference to MPEP § 1205.01 was added. In former item 12 (renumbered as item 10), 37 CFR "1.515" was changed to 37 CFR "1.515(c)." In former item 13 (renumbered as item 11), "pending in the Technology Center" was deleted. In former item 16 (renumbered as item 14), a cross-reference to MPEP § 1204.03 was added. In former item 18 (renumbered as item 16), "where the application is before the Technology Center" was added after "37 CFR 1.313(a)." In former item 19 (renumbered as item 17), ", subsection II" was added after "MPEP § 1308." In former item 20 (renumbered as item 18), a cross-reference to MPEP § 608.03 was added. In former item 21 (renumbered as item 19), a cross-reference to MPEP § 608.03(a) was added. Former item 22 was deleted.

    1002.02(c)(1)

    —In item 1, a reference to MPEP § 710 was added. In item 2, a reference to MPEP § 709, subsection II was added. The text formerly between items 2 and 3 was deleted. In item 3, 37 CFR "5.12(a)" was changed to "5.12(b)."

    —Former item 7 is now item 42 of MPEP § 1002.02(b). The item was revised to include a reference to subsection II of MPEP § 140. Former items 8-14 were renumbered as 7-13, respectively. In former item 9 (renumbered as item 8), the cross-reference to MPEP § 1109 was deleted and "as in effect on March 15, 2013" was added. In former item 10 (renumbered as item 9), a cross-reference to MPEP § 150 was added. In former item 11 (renumbered as item 10), a cross-reference to MPEP § 150 was added. In former item 12 (renumbered as item 11), a cross-reference to MPEP § 140 was added.

    1002.02(c)(2)

    —Item 2 was changed from "[p]etitions to make biotechnology applications special where applicant is a small entity, MPEP § 708.02, item XII." to "[r]equest for a certificate of statement of availability of deposit, MPEP § 2410.02."

    1002.02(c)(3)

    —In the section title, "and Requests" was added after "Petitions." In the preamble, before "requests," "petitions and" was deleted. Items 1 and 2 were deleted. The item number for item 3 was deleted.

    1002.02(c)(4)

    —New section added directed to petitions decided by the Director of the Central Reexamination Unit.

    1002.02(d)

    —In item 2, MPEP § "1208.01" was changed to MPEP § "1207.04." In item 4, a cross-reference to MPEP § 1480 was added. In item 5, MPEP § "1481" was changed to MPEP § "1481.02."

    —In item 6, a cross-reference to MPEP § 714.01(e) was added. In item 7, 37 CFR "1.603" was changed to "41.202" and MPEP § "2303" was changed to "2304.04 et seq." In item 9, a cross-reference to MPEP § 608.02, subsection VIII was added. In item 10, MPEP § "1211" was changed to "1211.01."

    1002.02(e)

    —Section removed and reserved. The content was moved to MPEP § 1004, item 20.

    1002.02(f)

    —The first paragraph was revised to indicate that the Chief Administrative Patent Judge is authorized to delegate authority to decide any of the petitions or matters listed to the Deputy Chief Administrative Patent Judge, to a Vice Chief Administrative Patent Judge, a Lead Administrative Patent Judge, or to an Administrative Patent Judge of the Patent Trial and Appeal Board.

    —Items 1 and 2 were added and former items 1-5 were renumbered as 3-7, respectively. Former item 1(renumbered as item 3) was revised to provide for "[d]esignation of members of the Patent Trial and Appeal Board to, on written appeal, review adverse decisions of examiners upon applications for patents, review appeals of ex parte reexaminations, conduct derivation proceedings, conduct inter partes reviews and post-grant reviews, initially and on request for reconsideration. 35 U.S.C. 6."

    —Former item 2 (renumbered as item 4) was revised to remove the reference to "37 CFR 1.610(a)" and to include after "interference," "including the determination of priority and patentability of invention. Pre-AIA 35 U.S.C. 6."

    —Former item 3 (renumbered as item 5) was revised to refer to the review of appeals of inter partes reexaminations. In former item 4 (renumbered as item 6), former sub-items a, c, e, f, g, and h were deleted. Sub-items b and d were relabeled as sub-items e and f, respectively. New sub-items a-d, g, and h were added. Former item 5 (renumbered as item 7) was revised to refer to "pre-AIA" 35 U.S.C. 135(c) throughout. Sub-item a was revised to refer to 37 CFR 41.205(b) rather than 37 CFR 1.666(c) and sub-item b was revised to refer to 37 CFR 41.205(d) rather than 37 CFR 1.666(b).

    1002.02(g)

    —Former items 1-5 were deleted and replaced by new items 1-5.

    1002.02(j)

    —Former text was deleted and replaced by items 1-7.

    1002.02(k)(1)

    —In item 2, 37 CFR "1.304(a)(3)" was changed to "90.3(c)" and 37 CFR "2.145(d)" was changed to "2.145(e)." In item 3, 37 CFR "10.2(c)" was changed to "11.2(d)" and the phrase "regarding enrollment or recognition" was added at the end of the item. Former item 4 was renumbered as item 5 and a new item 4 directed to petitions under 37 CFR 11.2(e) was added. In former item 4 (renumbered as item 5), 37 CFR "10.155" was changed to "11.55" and 37 CFR "10.156" was changed to "11.56(c)."

    1002.02(k)(2)

    —In item 2, "Petitions requesting review" was changed to "Administrative appeals." A new item 3 was added directed to "[c]ertain uncontested decisions involving the Office of Enrollment and Discipline."

    1002.02(l)

    —In item 1, a cross-reference to MPEP § 1481 was added. In item 3, MPEP § "1481" was changed to "1481.02."

    1002.02(m)

    —In the section title, "the Office of" was added before "Enrollment and Discipline." Item 1 was revised to change "relating to registration" to "regarding enrollment or recognition under 37 CFR 11.2(c)." Item 2 was revised to change 37 CFR "10.9" to "11.9." Former items 3 and 4 were deleted and former items 5 and 6 were renumbered as 3 and 4, respectively. In former item 5 (renumbered as item 3), 37 CFR "10.160" was changed to "11.60." In former item 6 (renumbered as item 4), 37 CFR "10.170" was changed to "11.3." New item 5, directed to a "[p]etition to withdraw a Rule to Show Cause under 37 CFR 11.11(b)," was added.

    1002.02(o)

    —Revised text to eliminate item numbers and references to interferences and to specify that the Deputy Director of the USPTO has been delegated the authority to decide petitions to the Director of the USPTO from actions taken by the PTAB for matters not otherwise delegated to the Chief Administrative Patent Judge, the Deputy Chief Administrative Patent Judge, a Vice Chief Administrative Patent Judge, or administrative patent judge(s).

    1002.02(p)

    —Revised by replacing throughout the section, including in the section title, "PCT Legal Administrator" with "Director of International Patent Legal Administration." Revised item 8 to delete reference to petitions under 37 CFR 1.137 based on unavoidable delay.

    —Former items 9 and 16 were deleted. Former items 10-14 were renumbered as 9-13, respectively. In former item 10 (renumbered as item 9), "pre-AIA" was added before "37 CFR 1.47" and before "37 CFR 1.42." New items 14-16 were added. Former items 15 and 17 were renumbered as 17 and 19, respectively. New items 18, 20 and 21 were added.

    1002.02(q)

    —New item 1 was added. Former items 1-5 were renumbered as 2-6, respectively. Former item 6 was deleted. New item 8 was added.

    1002.02(r)

    —Item 3 was changed from "[r]equests to issue patent in name of the assignee after payment of the issue fee, 37 CFR 3.81(b), MPEP § 307" to "[r]equests for republication of an application, 37 CFR 1.221(a), MPEP § 1130." Item 4 was deleted.

    1002.02(s)

    —Revised section title by deleting "by the Special Program Examiners." Revised the section to be directed to petitions to make patent applications special under the accelerated program set forth in MPEP § 708.02(a). Sub-items (a)-(k) were deleted and new sub-items a-d were added. Sub-item (l) was relabeled as sub-item e. Former item 2 was deleted from this section and added to item 12 of MPEP § 1002.02(b)).

    1003

    —In item 1, relabeled sub-items i-iii as a-c, respectively. In item 2, revised to replace "on the 'Contents' of the file wrapper" with "in the file wrapper" and to delete references to MPEP § 201.14(c) and § 604.04(a). Item 3 was deleted from this section and added as new item 48 in MPEP § 1002.02(b). Former items 4-18 were renumbered as 3-17, respectively.

    —Former item 6 (renumbered as item 5) was revised to be directed to actions which hold claims unpatentable on grounds of rejection that would also be application to corresponding claims in a patent. In former item 7 (renumbered item 6), the cross-reference to MPEP § 2303 was deleted. In former item 9 (renumbered as item 8), MPEP § "2305.04" was changed to "2304.02." In former item 10 (renumbered as item 9), MPEP § "1208" was changed to "1207.02." In former item 11 (renumbered as item 10), MPEP § "2303" was changed to "2302." In former item 13 (renumbered as item 12), MPEP § "2305" was changed to "2304.04." In former item 14 (renumbered as item 13), "Office of Petitions" was changed to "Office of the Deputy Commissioner for Patent Examination Policy." In former item 16 (renumbered as item 15), a cross-reference to MPEP § 1308.01 was added. In former item 17 (renumbered item 16), sub-items i-ii were relabeled as a-b, respectively. In former item 18 (renumbered as item 17), MPEP § "1208" was changed to "1207.01." Former item 19 was deleted.

    1004

    —This section has been revised to include a number of actions (for example, allowances, examiner's amendments, Quayle actions, actions on amendments submitted after final rejection, and actions reopening prosecution) that previously were listed in MPEP § 1005 and require the attention of a primary examiner. The actions listed in this section have been numbered as 1-24 and the actions relating to interference practice were moved to the end of the list (now items 21-24). Item 10 was revised slightly from the language of item 10 in MPEP § 1005 because approval by the supervisory patent examiner is required unless the amendment is directed merely to formal matters or the cancellation of claims (see MPEP §§ 714.16 and 1002.02(d)). Item 13 (decision on affidavits or declarations) was updated to specifically mention affidavits or declarations under 37 CFR 1.130(a), 1.130(b), 1.131(a), 1.131(c), and 1.132. Item 14 was revised from the language of item 14 of MPEP § 1005 because it is the Technology Center Director (and not the primary examiner), who can grant second or subsequent suspensions (see MPEP § 1003).

    —Item 20 (moved from former MPEP § 1002.02(e)) regarding decisions on requests filed under 37 CFR 1.48 has been revised to include "filed prior to September 16, 2012" because requests under 37 CFR 1.48 filed on or after September 16, 2012 are decided by the Director of the Office Patent Application Processing (see MPEP § 1002.02(q), item 1).

    1005

    —Introductory paragraph revised to change "the signature of the primary examiner" to "the signature of a primary examiner, Technology Center Director, or practice specialist."

    —The actions listed in this section have been numbered as 1-21 and the actions relating to interference practice were moved to the end of the list as items 19-21. In item 7, the citation for examiner's answers on appeal was changed from MPEP § "1208" to MPEP § "1207." Item 13 (actions based on affidavit or declaration evidence) was updated to specifically mention affidavits or declarations under 37 CFR 1.130(a), 1.130(b), 1.131(a), 1.131(c), and 1.132. Item 15 regarding reissue applications was revised to include "e.g.," before "decisions on reissue oath or declaration."

    [top]

      

    CHAPTER 1100:

    1120

    —Revised to update 35 U.S.C. 122(b)(2)(A)(ii)-(iv) for consistency with conforming amendments made in the AIA. Updated 37 CFR 1.211(b), which added international design applications under 35 U.S.C. chapter 38 to the list of applications that will not be published. Subsection I revised to indicate that the Office will not publish "international design applications filed under 35 U.S.C. 385" under 35 U.S.C. 122(b).

    1121

    —In subsection I, added subordinate subsection headings A and B.

    1122

    —Subsection III revised to replace "37 CFR 1.137(b)" with "37 CFR 1.137(a)" because the relevant subject matter was moved to 37 CFR 1.137(a) in the PLT implementation rule.

    1123

    —Revised to update 35 U.S.C. 122(b)(2)(B)(iii) for consistency with the PLTIA.

    1124

    —Revised to update 35 U.S.C. 122(b)(2)(B)(iii) for consistency with the PLTIA. Added subsection headings I and II.

    —In subsection II, updated 37 CFR 1.137 and revised text of subsection for consistency with the revised rule, which no longer provides for petitions to revive abandoned applications on the basis of unavoidable delay.

    1128

    —Updated 37 CFR 1.14 for consistency with changes to the rule made as a result of the PLTIA.

    —Subsection I revised to indicate that if a published patent application is pending and is not maintained in the IFW system, the paper application file itself will not be available to the public for inspection and that only copies of the application file may be obtained pursuant to 37 CFR 1.14(a)(1)(iii). A cross-reference to MPEP § 103 was also added.

    —Subsection III was removed and information pertaining to physical access to published applications is now in subsection I.

    —Renumbered subsection IV as subsection III. Revised subsection to indicate that status information may also be provided when an application is referred to by its application number in an international publication of an international application under PCT Article 21(2), or in a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States.

    1130

    —Added subsection headings I and II.

    1134.01

    —Revised to remove Editor Note concerning the effective date of certain AIA provisions.

    —Updated 37 CFR 1.290(f) to replace the reference to "37 CFR 1.17(p)" with "37 CFR 1.17(o)."

    —Updated form PTO/SB/429 in subsection II.A.1. Revised subsection II.F.2 to explain that a resubmission of a third party submission after receipt of a notice of non-compliance must be complete as the Office will not accept amendments to a noncompliant submission.

    —Revised text to explicitly state that to be complete, the appropriate fee must accompany any resubmission made in response to a notification of non-compliance. Clarified that to satisfy the fee requirement for a resubmission after a finding of non-compliance where the proper fee set forth in 37 CFR 1.290(f), or a proper fee exemption statement under 37 CFR 1.290(g), accompanied the non-compliant submission, the third party may request that the Office apply the previously-paid fee or fee exemption statement to the resubmission. Added statement that "The determination of whether the fee requirement for a resubmission is satisfied will be made at the sole discretion of the Office."

    —Revised subsections V and VI to replace references to a notification "of non-compliance" with references to a notification "to the third party regarding its third-party submission."

    [top]

      

    CHAPTER 1300:

    1302.01

    —Revised to remove recommendation that examiners require applicants to limit the disclosure to be confined to and in harmony with the claims; deleted associated form paragraphs 13.07 and 13.08.

    —Revised to delete language stating that an examiner's amendment is required for changing the order of the claims, and to remove paper processing references.

    —Revised for consistency with 37 CFR 1.72 to specify that the title of an application may not exceed 500 words in length.

    1302.03

    —Updated Notice of Allowability form PTOL-37.

    1302.04

    —Revised to delete "formal" when preceding "examiner's amendment," and to delete instructions pertaining to "informal" examiner's amendment" practices, as these practices are not available in electronic processing. Revised to provide updated guidance on when an examiner may make changes to the specification, or any other paper filed in the application, without an examiner's amendment approved by applicant.

    —Revised to indicate that for continuing applications, a reference to a parent application in the first sentence(s) of the specification is no longer required when the reference appears in an Application Data Sheet. Added reference to benefit claims under 35 U.S.C. 386(c). Added explanation that if applicant has included a reference to the parent application in the specification, the examiner should review the statement and the application data sheet for accuracy. Further revised to provide updated guidance as to when an ADS is required for benefit claims.

    —Revised text and form paragraphs 13.02.01 and 13.02.02 to remove references to specific interview types.

    —Revised to update the role of the Office of Patent Quality Assurance upon discovery of any informality in the application suitable for correction by examiner's amendment.

    1302.04(b)

    —Section removed and reserved.

    1302.04(g)

    —Deleted "formal" preceding "examiner's amendment."

    1302.05

    —Revised to replace "Publishing Division" with "Office of Data Management" and to replace "non-extendable period" with "time period."

    1302.05(a)

    —Deleted.

    1302.06

    —Updated cross-references to sections of MPEP Chapter 200.

    1302.09

    —Updated Issue Classification sheet.

    —Revised to add reference to benefit claims under 35 U.S.C. 386(c), and to remove references to paper processing instructions.

    1302.10

    —Revised to add cross-references to MPEP §§ 905 through 907.

    —Revised to indicate that the Office Action Correspondence System (OACS) automatically populates the Issue Classification sheet with the Cooperative Patent Classification symbols applied to a family of documents, and as such it is possible that not all classification symbols shown on the Issue Classification Sheet have been searched by the examiner.

    1302.11

    —Section removed as unnecessary and reserved.

    1302.12

    —Revised to remove reference to paper processing, and to add reference to derivation proceedings.

    1302.13

    —Revised to reflect electronic signatures by examiners.

    1302.14

    —Revised to delete information specific to paper processing. Subsection V revised to include derivation among the proceedings considered by the Board.

    1303

    —Updated 37 CFR 1.311. Revised to note that the publication fee was reset to $0.00 effective January 1, 2014.

    —Revised to update the Notice of Allowance and Fee(s) Due form (PTOL-85) and the discussion thereof. Note that page 3 of the form indicates that the Office no longer provides a patent term adjustment calculation with the Notice of Allowance.

    —Revised to add processing instructions associated with applications filed after September 16, 2012, which are in condition for allowance but do not include an oath or declaration in compliance with 37 CFR 1.63 or a substitute statement in compliance with 37 CFR 1.64.

    1303.01

    —Revised to state that if an amendment received after allowance contains claims copied from a patent to provoke an interference, see MPEP Chapter 2300.

    1303.02

    —Revised to delete limitation of text to Image File Wrapper applications.

    1303.03

    —Revised to replace cross-reference reference to MPEP § 409.01(f) with cross-references to MPEP §§ 409.01(a) and (b).

    1305

    —Revised to delete indication that an examiner may make an examiner's amendment correcting obvious errors after a Notice of Allowance is mailed.

    —Revised to indicate that once the patent has been granted, the Office can take no action concerning it, except as provided in 35 U.S.C. 135, 35 U.S.C. 251 through 256, 35 U.S.C. 302 through 307, 35 U.S.C. 311 through 319, and 35 U.S.C. 321 through 329.

    1306

    —Revised to reflect fee reductions for micro entities. Revised to remove reference to unavoidable delays in making issue fee payments.

    1306.01

    —Revised to remove paper processing instructions.

    1306.03

    —Revised to remove prior instructions for ordering of allowed application paper files.

    1308

    —Revised to update 37 CFR 1.313(b) and associated text in subsection II to reflect that derivation proceedings are a reason the Office may withdraw an application from issue.

    —In subsection I.B, added references to filing an ePetition via EFS-Web to withdraw an application from issue. Subsection I.B further revised to indicate that once a petition under 37 CFR 1.313(c)(1) or (c)(2) has been granted, the application will be withdrawn from issue, the applicant's submission(s) will be entered, and the application forwarded to the examiner for consideration of the submission and further action.

    —Subsection II revised to replace discussion of paper processing with current electronic processing procedures.

    —New subsection III added to provide guidance for handling of applications withdrawn from issue which contain an examiner's amendment.

    1308.01

    —Revised to reflect that a case may be withdrawn from issue due to a new grounds of rejection.

    —Revised to replace discussion of paper processing with current electronic processing procedures.

    1308.02

    —Revised section title and text to add reference to withdrawal from issue for derivations purposes.

    1308.03

    —Updated business unit names.

    1309

    —Revised to reflect current electronic processing procedures.

    1309.02

    —Revised section title to "'Printer Rush' Cases." Revised text to reflect current electronic processing procedures.

    [top]

      

    CHAPTER 1500:

    1501

    —Updated 35 U.S.C. 171. Revised to add references to international design applications as provided for in 35 U.S.C. chapter 38 as a result of the PLTIA. Added cross-reference to MPEP Chapter 2900 for additional information concerning international design applications. Also added explanation that certain statutory provisions in 35 U.S.C. chapter 38 provide for the applicability of the provisions of 35 U.S.C. chapter 16 to international design applications, and accordingly many of the practices set forth in MPEP Chapter 1500, such as those pertaining to examination in MPEP § 1504, are applicable to international design applications that designate the United States.

    1502

    —Revised to delete form paragraphs previously reproduced herein; form paragraphs relating to statutory subject matter are set forth in MPEP § 1504.01.

    1502.01

    —Revised to indicate that the term of a design patent is 15 years for applications filed on or after May 13, 2015 and 14 years for applications filed prior to May 13, 2015.

    —Revised to indicate that an international design application designating various countries may be filed for design applications under the Hague Agreement.

    —Revised to remove prior references to the effective date of changes to continued prosecution applications in design applications.

    1503

    —Revised section title and text to indicate that this section is directed to design applications filed under 35 U.S.C. chapter 16.

    1503.01

    —Revised to update 37 CFR 1.154 and to limit the applicability of form paragraph 15.05 to design applications filed under 35 U.S.C. chapter 16.

    —Subsection I revised to indicate that the title may contribute to defining the scope of the claim, and to delete text pertaining to objecting to the title when it does not correspond to the claim.

    —Subsection I further revised to indicate that the practice set forth in this section regarding the title of the design is generally applicable to international design applications designating the United States. Updated form paragraph 15.05.01.

    —In subsection II, item (A)(4), replaced "environmental use" with "intended use." Subsection II further revised to add form paragraph 15.61.01.

    —Subsection III revised to indicate that the form and content of the claim in an international design application is set forth in 37 CFR 1.1025 and mirrors 37 CFR 1.153. Revised form paragraphs 15.62 and 15.63 to include reference to 37 CFR 1.1025.

    1503.02

    —Revised form paragraph 15.05.03 for clarity.

    —Subsection I revised to remove the indication that the basis for an objection pertaining to sectional views is 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph.

    —Subsection II revised to delete form paragraph 15.49 pertaining to surface shading.

    —In subsection III, revised form paragraphs pertaining to the use of broken lines, and deleted form paragraph 15.50.03.

    —Subsection V revised for consistency with 37 CFR 1.84(a) as amended in the Hague implementation rule to indicate that color drawings are permitted in design applications, and that one set of color drawings is required if submitted via the Office electronic filing system or three sets of color drawings are required if not submitted via the Office electronic filing system. Deleted references to petitions to accept color drawings in design applications and revised form paragraphs pertaining to color drawings or photographs.

    1504

    —Added cross-reference to MPEP § 401 and updated form paragraph 15.66 with regard to how to obtain a list of registered patent practitioners.

    1504.01

    —Revised to update 35 U.S.C. 171.

    —Revised form paragraph 15.07.01 and inserted form paragraphs 15.42 and 15.43.

    1504.01(a)

    —Revised subsection I.B to remove certain references to 37 CFR 1.71, 1.84, and 1.152-1.154 where the provisions discussed are also applicable to international design applications, and added cross-references to rules specific to international design applications where appropriate.

    1504.01(c)

    —Subsection II revised to add citation of In re Jung, 98 USPQ2d 1174 (Fed. Cir. 2011).

    —Subsection V revised to add cross-reference to MPEP § 716.03(b) and to add a citation to, and discussion of, In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) regarding submission of evidence of commercial success.

    —Subsection V further revised to indicate that the requirement that the design was created for the 'purpose of ornamenting' must be met with appropriate evidence concerning visibility for a rejection under 35 U.S.C. 171 to be overcome if the design would be hidden during its end use and to cite In re Webb, 916 F.2d 1553 (Fed. Cir. 1990).

    1504.01(e)

    —Revised to change form paragraph cross-reference to "15.09.01".

    1504.02

    —Revised to delete text of 35 U.S.C. 172.

    —Revised to remove discussion of In re Bartlett with regard to the standard for determining novelty.

    —Revised to include references to Door Master Corp. v. Yorktowne, Inc., 256 F.3d 1308 (Fed. Cir. 2001), International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009), Egyptian Goddess Inc. v. Swissa Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), Richardson v. Stanley Works Inc., 93 USPQ2d 1937 (Fed. Cir. 2010), and Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365 (Fed. Cir. 2006) with regard to the "ordinary observer" test for anticipation. Further revised to expand discussion of In re Glavas, 230 F.2d 447 (CCPA 1956).

    —Revised to clarify that registration of a design abroad is considered to be equivalent to patenting for priority purposes under 35 U.S.C. 119(a) - (d) and for prior art purposes pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published.

    —Revised form paragraphs.

    1504.03

    —Revised to update 35 U.S.C. 103, and to indicate that any reference to 35 U.S.C. 103 is equally applicable to pre-AIA 35 U.S.C. 103(a), unless otherwise noted.

    —Added form paragraph 15.19.02.aia and revised examiner note 8 of form paragraph 15.19.02.fti to reference benefit claims under 35 U.S.C. 368(c).

    —Revised subsection I.D to add citation to MRC Innovations, Inc. v. Hunter Mfg., LLP, 110 USPQ2d 1235 (Fed. Cir. 2014); and Crocs Inc. v. International Trade Commission, 93 USPQ2d 1777 (Fed. Cir. 2010).

    —Revised subsection II.A.2 title to read "Nonanalogous Art."

    —In subsection III, revised numerous form paragraphs related to obviousness rejections.

    1504.04

    —Revised to delete reproduction of pre-AIA 35 U.S.C. 112.

    —Revised form paragraph 15.20.02 to indicate that it is applicable only to design applications filed under 35 U.S.C. chapter 16 and to delete the suggestion that applicant submit large, clear informal drawings in response to a rejection under 35 U.S.C. 112. Also revised form paragraph 15.21.01.

    1504.05

    —Revised to correctly state that the issue of whether a search and examination of an entire application can be made without a serious burden to the examiner does not apply to design applications.

    —Subsection III revised to clarify that clear admission on the record by the applicant, on its own, that the embodiments are not patentably distinct (as noted in MPEP § 809.02(a)) will not overcome a requirement for restriction if the embodiments do not have overall appearances that are basically the same as each other.

    —In subsection III, revised guidance as to the handling of applications which are in condition for allowance except for the presence of withdrawn claims so as to be consistent with MPEP § 821.01.

    1504.06

    —Revised to indicate that indicate that a double patenting rejection based on 35 U.S.C. 171 is a "statutory" double patenting rejection.

    —Revised the discussion of nonstatutory double patenting for consistency with MPEP § 804.

    —Revised to specify the conditions under which a double patenting rejection would be appropriate for consistency with MPEP § 804. Further revised to add citation to MPEP § 1490 for situations when a provisional double patenting rejection is the only rejection remaining in an application.

    —In subsection II, added explanation that a double patenting rejection also serves public policy when it prevents the possibility of multiple suits against an accused infringer by different assignees.

    —Subsection II revised to indicate that a nonstatutory double patenting rejection "may only be necessary" (rather than "should only be given") if the reference patent issued less than a year before the filing date of the application, and to clarify that a terminal disclaimer may obviate a nonstatutory double patenting rejection.

    —Subsection II further revised to replace "obviousness-type" double patenting with "nonstatutory" double patenting, and to replace "one-way obviousness" with "one-way distinctness" for consistency with MPEP § 804 and current terminology. Conforming revisions made to the form paragraphs.

    1504.10

    —Updated 35 U.S.C. 172. Revised text to indicate that for design applications filed on or after May 13, 2015, a claim for priority may be made to an international design application pursuant to the PLTIA.

    —Revised to add text explaining that under certain conditions, a right of priority to a foreign application may be restored if the U.S. design application is filed within two months of the expiration of the six-month period specified in 35 U.S.C. 172.

    —Revised form paragraphs 15.01, 15.01.01, 15.02, 15.03 for consistency with 37 CFR 1.55 as set forth in the Hague implementation rules.

    1504.20

    —Updated 35 U.S.C. 120. Revised text for consistency with 37 CFR 1.78(d) as amended in the Hague implementation rule to add a more detailed description of the requirements for a proper benefit claim.

    —Revised to add a discussion of how to delete or change a benefit claim, the impact of changing the relationship of an application from a continuation or divisional application to a continuation-in-part application, and the definition of a continuation-in-part application. Added an explanation of when a continuation-in-part application is not entitled to the benefit of the filing date of the parent application. Deleted reference to applications filed prior to September 21, 2004.

    —Revised form paragraphs related to continuation-in-part applications, and added new form paragraph 15.74.01.

    —Revised discussion of pre-AIA 35 U.S.C. 102(d)/172.

    —Revised to add citation of Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 11 USPQ2d 1300 (Fed. Cir. 1989) and Vas-Cath Inc. v. Mahukar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991) and with regard to benefit claims in the design application-utility application context. Deleted citation of In re Chu.

    1504.30

    —Revised to update 37 CFR 1.155 and discussion thereof to indicate that expedited examination is available for international design applications designating the United States that have been published pursuant to Hague Agreement Article 10(3).

    —Revised to update procedures for filing a request for expedited processing in a design application or international design application designating the United States, and to set forth recommended practices to facilitate processing of a request. Added instructions for filing requests for expedited examination via EFS-Web.

    1505

    —Revised to update 35 U.S.C. 173 in accordance with the PLTIA.

    1512

    —Revised subsection II to indicate that the examiner will not object to a copyright notice as extraneous when it is limited in print size from 1/8 to ¼ inch and placed within "sight" of the drawing immediately below the figure representing the copyright material.

    [top]

      

    CHAPTER 1700:

    1701

    —Revised to indicate that Office personnel are only permitted to express an opinion on the validity or patentability of any claim of a patent to the extent necessary to carry out an examination of a reissue application of the patent, a supplemental examination proceeding or reexamination proceeding to reexamine the patent, an interference or derivation proceeding involving the patent, or an inter partes or post-grant review of the patent.

    1702

    —Revised section title to read "Restrictions on Current and Former Office Employees Regarding Patent Matters." Added text of 35 U.S.C. 4 and updated 37 CFR 11.10. Added paragraph discussing the inventor's oath or declaration when an Office employee is named as an inventor in a patent application.

    1703

    —Revised to update the description of The Official Gazette – Patents (eOG:P), including the website address, information on the various pages of the eOG:P, and the information provided for each patent issued on the eOG:P publication date. Revised to delete reference to the availability of paper copies of the Official Gazette, as the Official Gazette is now only available in electronic form.

    1704

    —Revised to delete reference to bar code readers as means to enter transactions into PALM (Patent Application Locating and Monitoring) System. Also revised to replace "accelerated" with "expedited" to be consistent with PALM examiner docket reports.

    1705

    —Revised to delete Form PTO-1472 Examiner's Case Action Worksheet and references thereto. Revised to provide update of how the Examiner's Time and Activity Report is generated, and to delete references to an examiner "count" and instead utilize "credit," consistent with the current examiner production system.

    —Added subsection numbers to the subsection titles. Updated list of items for which the examiner will receive a disposal credit to further include institution of a derivation proceeding.

    1711

    —Section removed and reserved.

    1720

    —Revised to reflect current practice for forwarding Board decisions to the examiner.

    1721

    —Revised to change the term preceding "Commissioner for Patent Examination Policy" from "Associate" to "Deputy," and to change the term following "Deputy Commissioner" from "for Patents" to "for Patent Operations."

    1730

    —In subsection II.B, updated information pertaining to the Patent Electronic Business Center (EBC). In subsection II.B.1(e), updated information pertaining to Assignments on the Web (AOTW). Added new subsection II.B.1(f) directed to the Global Patent Network and its utility for providing English language translations of a large subset of Chinese patent documents created by machine translation technology. In subsection II.B.2(a), added cross-reference to the EFS-Web Legal Framework.

    —In subsection III, updated the PCT Help Desk hours.

    —In subsection IV, updated information pertaining to the location of the main library of the Scientific and Technical Information Center.

    —In subsection V, limited the discussion of the list of attorneys and agents registered to practice before the Office to providing the website where the list is available.

    —In subsection VI.A, updated contact information for the Application Assistance Unit. In subsection VI.E, updated information pertaining to acquiring copies of patent documents from the Office of Public Records' Patent and Trademark Copy Fulfillment Branch. In subsection VI.F, added cross-reference to relevant information found in MPEP § 2570. In subsection VI.G, provided updated contact information for Assignment Recordation Services regarding filing assignments or other documents affecting title. In subsection VI.H, updated information pertaining to petitions administered by the Office of Petitions. In subsection VI.I, updated information regarding downloading the PatentIn software program or using PatentIn. Added cross-reference to relevant information found in MPEP § 2430.

    [top]

      

    CHAPTER 1800:

    Passim

    —Deleted phrase "international applications filed on or after January 1, 2004" at each occurrence.

    1801

    —Revised subsection I to change "designates or elects" to "designates."

    —Revised subsection II to change "earlier filed national application" to "earlier-filed application" in discussion of "priority date" for timing purposes. Also changed "date of filing" to "date of receipt," and added citations to PCT Rules 14.1(c), 15.3 and 16.1(f).

    —Revised subsection III to add the Australian Patent Office (IP Australia), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), and the Japan Patent Office (JPO) as International Searching Authorities (ISAs) which applicants filing in the United States Receiving Office (RO/US) may choose. Added cross-reference to MPEP §§ 1840.01-1840.06 for further information regarding ISA/EP, ISA/KR, ISA/AU, ISA/RU, ISA/IL, and ISA/JP.

    —Subsection III further revised to indicate that copies of the international search report and prior art will be "made available" (rather than "sent") to the applicant by the ISA. Added sentence to subsection III to indicate that if a Demand for Chapter II examination is not timely filed, the International Bureau communicates a copy of the written opinion established by the ISA (retitled International Preliminary Report on Patentability (Chapter I of the PCT)) to each designated Office after the expiration of 30 months from the priority date.

    —Subsection IV revised to indicate the applicant may request, by checking a box on Form PCT/RO/101, for the International Bureau to obtain a copy of the priority document from a digital library if the priority document is registered in a digital library and made available to the International Bureau within the prescribed time limit, as set forth in PCT Rule 17.1(b-bis) and the access code is furnished to the International Bureau. Also revised to change "prepare the certified copy" to "transmit a copy of a prior application."

    —Subsection IV revised to indicate that, for international applications filed before July 1, 2014, former PCT Rule 44ter provided that the written opinion of the ISA would not be made publicly available until the expiration of 30 months from the priority date, but that, for international applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by applicant will be made available to the public as of the publication date. Also changed "International Bureau transmits copies" to "International Bureau communicates copies."

    —Subsection V revised to indicate that at the time of MPEP publication, only three countries had not adopted Article 22(1) as amended: Luxembourg (LU), United Republic of Tanzania (TZ) and Uganda (UG), and to indicate applicant may desire to file the Demand by 19 months from the priority date to extend the national stage entry deadline in these three countries. Also revised to indicate Luxembourg is included in the regional designation "EPO" and the United Republic of Tanzania and Uganda are included in the regional designation "ARIPO." Also revised to indicate the IB forwards any statement explaining the basis for the Article 19 amendments to the IPEA with the Demand.

    1803

    —Section title revised to mention Notifications of Incompatibility. Deleted discussion of a reservation under PCT Article 64(4) relating to the prior art effective date of a U.S. patent issuing from an international application. Revised the indication that the USPTO "has taken a reservation on adherence to" specified PCT rules to instead indicate the USPTO "has made a notification of incompatibility with respect to" the specified rules.

    1805

    —Revised to change citation regarding who can file an international application from 37 CFR 1.421-1.423 to MPEP § 1806. Deleted indication that, for purposes of designating the United States of America, the applicant(s) must be the inventor(s), and that the RO/US is located in Arlington, VA. Added indication that international applications may be filed electronically through EFS-Web. Also revised to indicate any request to transfer the application to the International Bureau which is received after substantial processing of the international application by the RO/US has occurred may be declined.

    1806

    —New section added. Subsection I discusses applicants and inventors for international applications filed on or after September 16, 2012, and subsection II discusses applicants and inventors for international applications filed before September 16, 2012.

    —Includes information formerly in MPEP § 1820 concerning deceased inventors, and information formerly in MPEP § 1821 regarding applicants and inventors.

    1807

    —Revised to update PCT Rules 90.4(b) and (d). Added an indication that a Customer Number may be used in the international phase solely for purposes of viewing the international application in PAIR and added a cross-reference to new MPEP § 1809. Updated PCT Rules 90.5(b)-(d). Also updated to indicate that a separate power of attorney or copy of the general power of attorney may still be required in certain cases, e.g., where waiver could result in harm to an applicant as in the case of the removal of an applicant.

    1808

    —Updated to include the International Bureau as an alternative to the U.S. receiving Office when submitting a request to withdraw from representation as attorney or agent in an international application. Changed references to former 37 CFR 10.40 to instead reference 37 CFR 11.116. The requirement to notify the client of any replies that may be due and the time frame for reply was deleted.

    1809

    —New section added to address PAIR access to international applications.

    1810

    —Updated 35 U.S.C. 363 and 37 CFR 1.431(b)(3)(iii), and deleted 35 U.S.C. 373. With respect to the applicability of PCT Rules 4.18 and 20.6, deleted two occurrences of "In applications filed on or after April 1, 2007."

    1812

    —Deleted a reference to former PCT Administrative Instructions Section 102bis.

    1817

    —Revised to delete the table listing the PCT Contracting States; added website addresses for updated lists of PCT Contracting States and information about regional patents that can be obtained via the PCT.

    1817.01

    —Section deleted. The content formerly in this section was moved to a new subsection VIII in MPEP § 1821.

    1817.01(a)

    —Section relating to international applications filed before January 1, 2004, deleted.

    1817.02

    —Section deleted. The content formerly in this section was moved new MPEP § 1828.02.

    1820

    —Updated PCT Rule 4.15. Deleted discussion of the requirement for a separate signed power of attorney in international applications filed prior to January 1, 2004. Added information concerning handwritten signatures and S-signatures, and included a cross-reference to MPEP § 502.02, subsection II. Deleted discussions concerning an applicant/inventor unavailable or unwilling to sign and moved information concerning a deceased inventor to new MPEP § 1806.

    1821

    —This section has been reorganized into an introductory portion and subsections numbered I-VIII.

    —In the introductory portion, removed the discussion of PCT-EASY physical media and former PCT Administrative Instructions Section 102bis and added a discussion of filing the PCT Request form in PCT-EASY.zip file format via EFS-Web and obtaining a reduction of the international filing fee.

    —In subsection II, added a cross-reference to new MPEP § 1828.02 for how to indicate the international application is a continuation or continuation-in-part of an earlier application.

    —In subsection V, added a cross-reference to new MPEP § 1806 for who can be applicant and moved the discussion of applicants and inventors to new MPEP § 1806. Deleted the indication that the check box "applicant only" must be marked where the applicant is a corporation or other legal entity.

    —Subsection VIII, entitled "Designation of States," is a new subsection directed to the content of former MPEP § 1817.01, "Designation of States in International Applications Having an International Filing Date On or After January 1, 2004."

    1823

    —Revised to update PCT Administrative Instructions Section 204.

    1823.01

    —Revised to update an IB website address.

    1823.02

    —Revised to update PCT Administrative Instructions Section 208. Added "(text)" after occurrences of "electronic form" to clarify the type of electronic form. Subsection I revised to explain that full compliance with the requirements of the U.S. rules will generally ensure compliance with the applicable PCT requirements, but the requirements of 37 CFR 1.821 through 37 CFR 1.825 are less stringent than the requirements of WIPO Standard ST.25. Revised to include cross-references to MPEP § 2422, subsection II, MPEP § 2422.03(a), subsection IV, and MPEP § 2422.07 for information specific to filing sequence listings in international applications. Revised to include a paragraph explaining the calculation of the international filing fee for an international application filed with a sequence listing in ASCII text and/or PDF.

    —Deleted the text of former subsection II. Added a new subsection II directed to the requirements for submitting tables related to sequence listings in international applications.

    1824

    —Revised to update PCT Administrative Instructions Section 205. Removed the indication that paragraph numbers (e.g., paragraph numbers complying with 37 CFR 1.52(b)(6)) are acceptable provided they are not placed in the margins.

    1825

    —Deleted indication that where tables cannot be presented satisfactorily in an upright position, they may be placed sideways.

    —Clarified that rectifications of obvious mistakes are not considered to be amendments, and that an amendment shall not go beyond the disclosure in the international application as filed. Added a cross-reference to PCT Article 34(2)(b).

    —Updated to indicate, if drawings are referred to in an international application but not found in the search copy file, examiners may consult with a Quality Assurance Specialist or with a PCT Special Program Examiner.

    1826

    —Revised to indicate the International Searching Authority establishes the abstract if the applicant fails to furnish an abstract within a time limit fixed in the invitation and to include a cross-reference to PCT Rule 38.

    —Also revised to indicate the applicant may propose modifications of, or comment on, the new abstract until the expiration of 1 month from the date of mailing of the international search report.

    1827

    —Revised to indicate for international applications filed in the RO/US after November 15, 2011, the transmittal fee includes a non-electronic filing fee portion for international applications filed in paper rather than by EFS-Web.

    1827.01

    —The reference to specific ISAs (KIPO and EPO) was replaced with broadened language that covers all of the possible ISAs.

    1828

    —Deleted reference to July 1, 1998 effective date regarding the time limit for adding or correcting a priority claim. Added a cross-reference to MPEP § 1859 for a withdrawal of a priority claim.

    —Added an indication that the request (Form PCT/RO/101) includes a box which can be checked to request that the receiving Office prepare the certified copy of a priority document; also added that applicant may request that the International Bureau obtain a copy of the priority application from a digital library and added a cross-reference to PCT Rule 17.1(b-bis).

    —Revised to indicate the transmission may be delayed or prevented when no inventor common to the priority application is named in the international application.

    1828.01

    —Revised to include 37 CFR 1.452, a reference to 37 CFR 1.17(m) for the requisite fee, and an indication the RO/US may decline to forward the international application to the International Bureau under PCT Rule 19.4(a)(iii) if substantial processing of the international application by the RO/US has occurred.

    —Revised to indicate that in the United States, a right of priority that has been restored under PCT Rule 26bis.3 during the international stage will be effective in the U.S. national stage and added a cross-reference to MPEP § 1893.03(c). Further revised to include a reference to WIPO's website for a full listing of the national offices that will not accept the restoration of the right of priority in the national stage.

    —Revised to clarify that, regardless of the Rule 26bis.3 and 49ter.1(g) status of any particular Office, the priority date will still govern all PCT time limits, including the thirty-month period for filing national stage papers and fees under 37 CFR 1.495.

    —Revised to remove an example of a U.S. national stage application that was not entitled to a right of priority because the earlier-filed application was filed more than a year before the international filing date of the U.S. national stage application.

    —Revised to remove references to the versions of 35 U.S.C. 119(a) and 365(b) that were in effect prior to December 18, 2013.

    1828.02

    —New section directed to the content of former MPEP § 1817.02, "Continuation or Continuation-in-Part Indication in the Request."

    1830

    —Revised to update a website address.

    1832

    —Revised to remove a reference to the PCT international application transmittal letter, Form PTO-1382.

    1834

    —Revised to update PCT Rule 92.2(a).

    1834.01

    —Revised to delete references to telegraph and teleprinter from the section title and text of the section. Added an indication that facsimile transmission may be used to submit article 34 amendments.

    1834.02

    —Revised to delete PCT Rule 82.2 and replaced the cross-reference to PCT Rule 82.2 with a cross-reference to PCT Rule 82quater. Further revised to include subsection numbers in the subsection titles.

    1840

    —Revised to update the list of States for which the USPTO agreed to conduct international searches and prepare international search reports and written opinions of the International Searching Authority.

    —Revised subsection III to delete indication that the United States International Searching Authority is the Examining Corps of the USPTO and to add indication that the Australian Patent Office (IP Australia), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), and the Japan Patent Office (JPO) are competent to carry out the international search for international applications filed with the RO/US. Subsection III further revised to add that the choice of the ISA must be made by the applicant on filing the international application, information which was previously in MPEP §§ 1840.01 and 1840.02.

    —Added information to subsection III regarding the amount of the international search fee and when the fee is due. Also added that if the selected ISA considers that the international application does not comply with the requirement of unity of invention, it may invite applicants to timely pay directly to it an additional search fee for each additional invention.

    1840.01

    —Section rewritten to explain that effective January 1, 2015, the EPO no longer has any limitations concerning its competency to act as an International Searching Authority, and to explain the extent to which applications containing claims relating to business methods and subject matter set forth in PCT Rule 39.1 will be searched.

    —Moved the indication that the choice of the ISA must be made by the applicant on filing the international application from this section to MPEP § 1840.

    1840.02

    —Moved the indication that the choice of the ISA must be made by the applicant on filing the international application as well as information regarding the search fee and unity of invention previously in this section to MPEP § 1840.

    —Revised to include indication that that copies of documents cited in the international search report by the ISA/KR will be made available to applicant on the KIPO website within three months from the mailing of the international search report and that a fee may be required for request of the cited documents after the expiration of the three month period.

    1840.03

    —Added new section directed to the Australian Patent Office as an ISA.

    1840.04

    —Added new section directed to the Federal Service for Intellectual Property (Rospatent) (Russian Federation) as an ISA.

    1840.05

    —Added new section directed to the Israel Patent Office (ILPO) as an ISA.

    1840.06

    —Added new section directed to the Japan Patent Office (JPO) as an ISA.

    1842

    —Revised to include new subsection V, entitled "Supplementary International Search (SIS)," and redesignated former subsections V and VI as VI and VII, respectively.

    —Revised to include an indication in subsection VII.A that at the time of publication of this Chapter, only three countries have not adopted Article 22(1) as amended: Luxembourg (LU), United Republic of Tanzania (TZ) and Uganda (UG).

    —Revised to indicate that Luxembourg is included in the regional designation "EPO" and that the United Republic of Tanzania and Uganda are included in the regional designation "ARIPO."

    1843.04

    —Revised to remove "[f]or international applications having an international filing date on or after January 1, 2004."

    1843.05

    —Revised to indicate that for international applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by the applicant are made available to the public in their original language as of the publication date.

    —Revised to remove a discussion of internal processing times in the Technology Centers and in the International Application Processing Division.

    1844

    —Revised to change "the relevant listings or related tables" to "the relevant listings."

    1844.01

    —Revised subsection I.C to delete references to tables related to sequence listings. Subsection I.C further revised to clarify information regarding boxes 1a-1c and to add information regarding items 2-3 of Form PCT/ISA/210.

    —Revised subsection V to change "U.S. Classification" to "the patent classification as required by the ISA/US."

    —Revised subsection VI to include an indication that the USPTO in its capacity as the International Searching Authority makes a separate detailed search history of record in the applications and mails these search histories to applicants with the international search report.

    —Revised subsection VIII to delete an indication that the date of actual completion of the ISR is generated automatically by OACS. Replaced the example of Form PCT/ISA/210 with an example created using the January 2015 form.

    1845

    —Revised to remove "[f]or international applications having an international filing date on or after January 1, 2004."

    1845.01

    —Revised to replace "International Patent Classification and U.S. Classification" with "classifications."

    —Revised to change "electronic form" to "electronic form (text)" and "paper" to "paper/image."

    —Revised to change "sequence listing and/or tables relating thereto" to "sequence listing" and to delete information about tables that fail to comply with the technical requirements of Annex C of the Administrative Instructions.

    —Revised subsection I to delete an indication that the examiner must indicate the "type of material (i.e., a sequence listing and/or tables related thereto)." Further revised subsection I to include an indication that item 5 is available for providing any additional comments.

    —Revised subsection II to add "Quality Assurance Specialist or PCT" prior to "Special Program Examiner."

    —Revised to replace the example of Form PCT/ISA/237 with an example created using the July 2014 form.

    1845.02

    —Revised to change "Form PCT/ISA/101" to "Form PCT/RO/101."

    —Revised replace the example of Form PCT/ISA/220 with an example created using the January 2015 form.

    1846 - 1847

    —Section removed and reserved.

    1848

    —Revised the section title and text to delete references to tables related to sequence listings.

    —Revised to include PCT Rules 13ter.2 and 13ter.3 and to update PCT Administrative Instructions Sections 513(d)-(f).

    —Revised to remove a paragraph directed to the filing of a sequence listing and/or any tables related thereto in the RO/US on CD-R or CD-ROM.

    1850

    —Revised subsection V to include IPAU, Rospatent, and ILPO. Also revised subsection V to indicate the additional search fee amounts can be found in Annex D of the Applicant's Guide (www.wipo.int/pct/en/appguide).

    1851

    —Revised to change "Special Program Examiners" to "Quality Assurance Specialists."

    —Revised to replace tables listing information from WIPO Standard ST.16 with an explanation of what is included in Parts 7.3.1, 7.3.2, and 7.3.3 of WIPO Standard ST.16.

    —Revised to remove the table listing the two-letter country codes set forth in WIPO Standard ST.3 and updated the website address for WIPO Standard ST.3.

    1852

    —Revised to remove an indication that upon specific request and payment of the appropriate international type search report fee in a U.S. national nonprovisional application, that an international type search report Form PCT/ISA/201 will be prepared.

    —Revised to include a discussion of taking into account the earlier search results from a foreign Office.

    1853

    —Revised to update PCT Rule 46.5 and PCT Administrative Instructions Section 205 and to remove 37 CFR 1.415.

    —Revised to include an enhanced discussion of amendment practice before the International Bureau under PCT Article 19.

    1856

    —New section added entitled "Supplementary International Searches."

    1857

    —Revised to update 35 U.S.C. 374.

    —Revised to change "sends copies of published international applications" to "communicates published international applications." Further revised to replace a discussion of the USPTO receiving published international applications in printed form, on CD-ROM, and in other formats with an indication that published international applications are available from WIPO's Patentscope (www.wipo.int/patentscope/en/ ).

    —Revised to remove former Section 805 of the PCT Administrative Instructions and the discussion of sequence listings and/or tables filed in electronic format under former Part 8 of the PCT Administrative Instructions.

    —Revised to include an indication that sequence listings forming part of the international application may be filed in ASCII text (.txt) format and need not be filed in paper or PDF in addition to .txt format.

    —Revised to include an updated explanation of how to view and download the sequence listing parts of the description.

    1857.01

    —Section deleted.

    1859

    —Revised to update PCT Rule 90bis.5. Further revised to replace a discussion of an applicant inventor for the United States of America who cannot be found or reached with an indication that for international applications filed prior to January 1, 2013, applicants should see the version of PCT Rule 90bis.5 in effect at that time.

    1860

    —Revised to include subsection numbers I and II in the subsection headings.

    —Revised subsection I to include an indication that the examiner shall search at least to the point of bringing the previous search up to date and added a cross-reference to PCT Rule 66.1ter.

    —Subsection I also revised to include an indication that any written opinion of IP Australia, Rospatent ILPO or JPO (in addition to any written opinion of the USPTO, EPO, or KIPO as had been previously indicated), will be treated as the first written opinion of the United States International Preliminary Examining Authority.

    1860.01

    —Section deleted.

    1862

    —Revised to include a website address for the agreement between the USPTO and IB.

    1864

    —Revised to include the Patent Prosecution Highway as an example of an acceleration program for which a positive international preliminary examination report might be used as a basis.

    —Revised to replace a cross-reference to MPEP § 1730 with a website address for obtaining copies of Form PCT/IPEA/401.

    1864.01

    —Revised to update PCT Rule 66.8 and 37 CFR 1.485 and to delete a reference to MPEP § 1871.01.

    —Revised to include an enhanced discussion of the filing of amendments under PCT Article 34.

    1864.02

    —Revised to delete "or teleprinter address."

    1864.03

    —Revised to delete "on or after January 1, 2004."

    1865

    —Revised to include a discussion of PCT Rule 54 with respect to when the demand must be filed.

    —Revised to include a cross-reference to MPEP § 1842, subsection VII.A for more information about when it may be necessary to file a demand before the expiration of 19 months from the priority date.

    —Revised to delete the addresses for the EPO and KIPO.

    —Revised to change the heading "Choice of Examining Authority" to "Choice of International Preliminary Examining Authority" and to provide enhanced guidance for choosing among IPEA/US, IPEA/KR, IPEA/RU, IPEA/EP, IPEA/AU, IPEA/IL, and IPEA/JP.

    —Revised to add an indication that Demands filed with the USPTO should preferably be filed via EFS-Web. Further revised to include an indication that courtesy copies of the Demand should not be filed with USPTO and to delete an indication that PCT Rule 59.3 was amended July 1, 1998.

    —Revised to replace the example of Form PCT/IPEA/401 with an updated example created using the July 2015 form.

    1865.01

    —Section deleted.

    1866

    —Section removed and reserved.

    1867

    —Revised to delete an indication that the amount of the handling fee is set out in the schedule of fees annexed to the PCT Regulations.

    —Revised to remove the discussion of former 37 CFR 1.481(a) as it pertained to Demands filed prior to January 1, 2004.

    1868

    —Revised to indicate the Demand is considered as if it had been received on the actual filing date, i.e., the original date of receipt, "provided that the demand as submitted permitted the international application to be identified."

    1871

    —Revised to update PCT Rules 62.1 and 62.2 and to include PCT Rule 66.8.

    —Revised to include an indication that a copy of any Article 19 amendments and accompanying documents will be provided to the IPEA by the International Bureau unless the IPEA has indicated that it has already received such a copy.

    —Revised the language to mention the statement referred to in PCT Article 19 and the letter required under PCT Rule 46.5(b).

    —Revised to indicate that when amendments are made under PCT Rule 66.8, the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the replaced sheet. Further revised to indicate that the replacement sheet or sheets shall be accompanied by a letter drawing attention to the differences between the replaced sheets and the replacement sheets, the basis for the amendments, and preferably explaining the reasons for the amendment.

    1871.01

    —Section deleted.

    1874

    Updated to remove discussion of applications having an international filing date prior to January 1, 2004.

    1875

    Updated to remove discussion of applications having an international filing date prior to January 1, 2004.

    1875.01

    —Revised to include updated WIPO website address.

    1875.02

    —Revised to clarify that with respect to an invitation to pay additional fees, the applicant may reply "directly to the International Preliminary Examining Authority issuing the invitation."

    1876

    —Revised to update PCT Administrative Instructions Section 607.

    1876.01

    —Revised subsection II to change "examiner" to "International Preliminary Examining Authority."

    —Deleted subsection III, which had indicated that Form PCT/IPEA/412 must be signed by an examiner having at least partial signatory.

    1877

    —Revised to change two occurrences of "computer readable form" to "computer readable form (text)."

    1878

    —Revised to remove the note providing a cross-reference to former MPEP § 1878.01.

    —Revised the introductory portion to include PCT Rule 66.1ter and a discussion of top-up search procedures. Also revised to include an indication that since the IPEA/US will consider the written opinion of the ISA to be the first written opinion of the IPEA, item 1 of the cover sheet is marked accordingly and in item 2 of the cover sheet, the written opinion of the IPEA needs to be indicated as a second opinion.

    —Revised subsection I to update the discussion of the claims to reference "claim nos. or pages," to change "paper" to "paper/image," "electronic form" to "electronic form (text)," and to remove references to tables related to sequence listings. Also revised to include an indication that applicant's submission of a timely amendment to the claims alleged to be under Article 19 is accepted under Article 34 (not Article 19) unless the International Bureau has indicated the amendments were accepted under Article 19. Also revised to include an indication that the examiner must point out in item 4 if the amendments were not accompanied by a letter indicating the basis for the amendment in the application as filed. Also revised to add an indication that item 6 needs to be marked if the opinion is established taking into account the supplementary international search report(s) from the specified Supplementary International Searching Authority(ies) (SISA).

    —Revised subsection V to indicate the previous search should be brought up to date in all cases. Further revised to indicate that one copy of each newly cited foreign patent document and non-patent literature reference will be sent to the applicant and one copy will be retained for the application file. Further revised to change "Chapter II file" to "application file."

    1878.01

    —Section removed and reserved.

    1878.01(a)

    —Revised to update WIPO website address.

    1878.02

    —Revised to update PCT Rule 66.8(a) and 37 CFR 1.485 and to delete PCT Rule 66.9.

    —Revised to include an indication that the IPEA will consider a reply to the written opinion of the ISA if a Demand has been filed with the IPEA.

    —Revised the discussion of amendments to the claims, the description, and the drawings to include additional requirements with respect to the claims. More specifically, the discussion has been revised to include the requirement of PCT Rules 66.8(c) and 46.5(a) for a complete set of claims and the discussion has been revised to include the requirements set forth in PCT Rules 66.8(c) and 46.5(b) with respect to the letter accompanying the replacement sheets.

    1879

    —Revised to change "originally filed" to "originally filed/furnished," updated the discussion of the claims to reference "claim nos. or pages," changed "paper" to "paper/image," changed "electronic form" to "electronic form (text)," and removed references to tables related to sequence listings.

    —Revised to include an indication that the international preliminary examination report is otherwise known as International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty).

    —Revised to include a discussion of the requirement for a top-up search.

    —The first subsection heading was deleted and subsections II - X were renumbered as I - IX, resulting in subsection numbers I - VIII that correspond to Box Numbers I - VIII of Form PCT/IPEA/409.

    —Original subsection IV (renumbered as subsection III) was revised to include a new item (D), "no international search report has been established for the claims."

    —Original subsection X (renumbered as subsection IX) was revised to remove the discussion of Form PCT/IPEA/416. Further revised to move the information relating to information generated automatically by the OACS software from this subsection to a location preceding original subsection II (renumbered as subsection I), under a new heading "Form PCT/IPEA/409 Cover Sheet."

    —Original subsection X (renumbered as subsection IX) was further revised to include a discussion of what is required before annexes will be sent to the applicant and to the International Bureau, and what is required for annexes to be sent only to the International Bureau.

    —Revised to include an example of Form PCT/IPEA/416 preceding the example of Form PCT/IPEA/409, and the example of Form PCT/IPEA/409 was replaced with an updated example creating using the January 2015 form.

    1879.01

    —Revised to delete the note referencing former MPEP § 1879.01(a) for international applications filed prior to January 1, 2004.

    1879.01(a)

    —Section deleted.

    1879.02

    —Revised to indicate the international preliminary examination report and its annexes, if any, are transmitted to the applicant and the International Bureau using a Notification of Transmittal of International Preliminary Report on Patentability (Form PCT/IPEA/416). Also revised to change the requirement for Form PCT/RO/416 to be signed by a primary examiner to a requirement for the name of the authorized officer responsible for the international preliminary report to be indicated.

    1879.03

    —Revised to add Arabic, Korean and Portuguese to the list of languages in which the written opinion and the international preliminary examination report may be established.

    1879.04

    —Revised to delete PCT Rule 44ter and to update 37 CFR 1.11 and 37 CFR 1.14.

    1880

    —Revised to delete language regarding withdrawal of the demand or any election where an applicant/inventor for the United States could not be found or reached after diligent effort.

    1881

    —Revised to delete information regarding the storage of paper records by the Office of PCT Operations.

    1893

    —Revised to delete the text of 37 CFR 1.9 and to provide a cross-reference to 37 CFR 1.9 after the enumeration of the three types of U.S. national applications. Further revised to delete item (C), which contained cross-references to MPEP §§ 1895.01 and 1896 for special provisions that apply when the filing of an international application is taken into account in determining the patentability or validity of any application for patent or granted patent.

    1893.01

    —Revised to update 35 U.S.C. 371(c)(1), 35 U.S.C. 371(c)(4), and 37 CFR 1.491. Further revised to expand the discussion of 37 CFR 1.491(b) to clarify when entry into the national stage occurs for applications having an international filing date before September 16, 2012 and for international applications having an international filing date on or after September 16, 2012.

    1893.01(a)

    —Revised to update 37 CFR 1.414(c)(2). Revised to move 37 CFR 1.495 and the discussion thereof from this section to MPEP § 1893.01(a)(1).

    1893.01(a)(1)

    —Revised to include 37 CFR 1.495 and pre-AIA 37 CFR 1.495. Also revised to replace "To begin entry into the national stage " with "To avoid abandonment of an international application as to the United States," to replace "on or before" with "not later than the expiration of," and to replace "prior to" with "not later than the."

    —Revised to indicate it is preferable to file the required national stage items online using the EFS-Web system.

    —Revised to indicate the publication of an international application by the International Bureau within 30 months from the priority date is considered to satisfy the requirement of 37 CFR 1.495(b) for the USPTO to be furnished with a copy of the international application.

    —Revised to indicate that where the basic national fee has been paid and the copy of the international application (if required) has been received by expiration of 30 months from the priority date, but applicant has omitted any required item set forth in 37 CFR 1.495(c)(1), the Office will process the national stage application in accordance with the provisions of 37 CFR 1.495 in effect for that application.

    —Revised to explain that 37 CFR 1.495 was amended to permit postponement of the submission of the inventor's oath or declaration under certain conditions in national stage applications having an international filing date on or after September 16, 2012.

    1893.01(a)(2)

    —Revised to indicate that Article 19 amendments including a complete claim set in English will be entered and that Article 19 amendments filed before July 1, 2009 were not required to include a complete claim set. Further revised to include a website address where Form PTO-1390 can be found and to provide an indication that Form PTO-1390 includes a check box by which the applicant may expressly instruct the U.S. Designated/Elected Office not to enter the Article 19 amendment(s) in the United States national stage application.

    1893.01(a)(3)

    —Revised to include a website address where Form PTO-1390 can be found and to provide an indication that Form PTO-1390 includes a check box by which the applicant may expressly instruct the U.S. Designated/Elected Office not to enter the Article 34 amendment(s) in the United States national stage application.

    —Revised the discussion of substituting pages of the claims to discuss substituting pages "of the description or claims."

    1893.01(b)

    —Section added to explain that for national stage applications having an international filing date on or after September 16, 2012, the applicant may be: (a) the inventor(s); (b) the legal representative of a deceased or legally incapacitated inventor; (c) the assignee; (d) the obligated assignee (i.e., a person to whom the inventor is under an obligation to assign the invention); or (e) a person who otherwise shows proprietary interest in the application.

    1893.01(c)

    —Revised to add an indication that the number of sheets of description for purposes of calculating the application size fee includes sequence listings in PDF, but not sequence listings in .txt format. Further revised to delete discussion of tables related to sequence listings. Further revised to change the reference to 37 CFR 1.495(c)(3) to instead reference 37 CFR 1.495(c)(4).

    1893.01(d)

    —Revised to change "after completion of the 35 U.S.C. 371 requirements for entry into the national stage" to "from the date the national stage is entered as set forth in 37 CFR 1.491."

    1893.01(e)

    —Changed the section title from "Oath/Declaration" to "Inventor's Oath or Declaration" and revised text to include 35 U.S.C. 371(c)(4) and a discussion thereof.

    —Revised to include new subsection I, entitled "National Stage Applications Having An International Filing Date On Or After September 16, 2012."

    —Revised to include new subsection II, entitled "National Stage Applications Having An International Filing Date Before September 16, 2012."

    —Revised to delete the "CORRECTION OF INVENTORSHIP" heading and to reflect updated procedures for correcting inventorship, including an indication that effective September 16, 2012, the procedure set forth in 37 CFR 1.48(f) may be used to correct or update the name of an inventor in a nonprovisional application.

    1893.02

    —Revised to include a discussion of filing options when EFS-Web becomes unavailable and to include the website address of the USPTO's Legal Framework for EFS-Web.

    —Revised to remove a reference to discontinued Form PTO/SB/61/PCT.

    1893.03

    —Revised to update 37 CFR 1.496. Further revised to add a cross-reference to MPEP § 1893.01(a) for the date of entry into the national stage, and to provide an indication this date is commonly referred to as the "35 U.S.C. 371(c)" date.

    1893.03(a)

    —Revised to add an indication that choosing the screen prompt "U.S. National Stage Under 35 U.S.C. 371" will serve to identify the submission as a national stage submission under 35 U.S.C. 371.

    —Revised to delete the reference to 1077 O.G. 13 (14 April 1987).

    —Revised to include a new heading, "Conflicting Instructions" and to add a discussion of 37 CFR 1.495(g) indicating that for an application filed prior to September 16, 2012, an application submission containing conflicting instructions as to treatment under 35 U.S.C. 371 or 35 U.S.C. 111(a) was to be treated under 35 U.S.C. 111(a), but that for an application filed on or after September 16, 2012, such conflicting instructions will result in the application being treated as a national stage submission under 35 U.S.C. 371.

    1893.03(b)

    —Revised to update 35 U.S.C. 363 by deleting "except as otherwise provided in section 102(e) of this title." Further revised to delete a reference to 37 CFR 1.496(a) and to provide a description of the "371(c) date." Further revised to include a cross-reference to MPEP § 1893.01 for entry into the national stage.

    —Revised to include an indication that a Form PTO/DO/EO/903 in a national stage application having an international filing date prior to September 16, 2012 identifies the 371(c) date as the date of receipt of the 35 U.S.C. 371(c)(1), (c)(2), and (c)(4) requirements, and that a Form PTO/DO/EO/903 in a national stage application having with an international filing date on or after September 16, 2012 identifies the 371(c) date as the date of receipt of the 371(c)(1) and (c)(2) requirements.

    —Revised to delete an indication that for most legal purposes, the filing date is the PCT international filing date and to delete the exceptions to this general rule.

    —Revised to include an updated discussion of patent term adjustment under 35 U.S.C. 154(b)(1)(A)(i)(II) and to indicate that under the AIA Technical Corrections Act, the fourteen-month period in 35 U.S.C. 154(b)(1)(A)(i) for a national stage application is measured from the date of commencement of the national stage under 35 U.S.C. 371.

    1893.03(c)

    —Subsection I was updated to include a discussion of petitions to accept delayed priority claims under 37 CFR 1.55(e) and petitions for restoration of the right of priority under 37 CFR 1.55(c). Subsection I further revised to add an indication that in U.S. national stage applications it is permissible, but not required, to present the claim for priority in an application data sheet.

    —Subsection II was updated to include a discussion of applicant satisfying the certified copy requirement of PCT Rule 17 by requesting the International Bureau to obtain the priority document from a digital library, to include an updated cover sheet example that makes reference to PCT Rule 17.1(b-bis), and to discuss some situations when the applicant will be unable to rely on the International Bureau to forward a copy of the priority document.

    —Subsection II was further revised to include updated instructions to examiners regarding what to do when a certified copy of the priority document is not in the national stage application file but applicant asserts that a certified copy of the priority document was timely furnished under PCT Rule 17. The instructions were previously found in MPEP § 1896.

    —Subsection III was revised to change references to MPEP § 201.11 to instead reference MPEP § 211 et seq. Further revised to include a discussion of restoration of the benefit of a provisional application under 37 CFR 1.78(b). Further revised to indicate the reference to a prior filed provisional application must be in an application data sheet for national stage applications having an international filing date on or after September 16, 2012, but that requirement will be satisfied by the presentation of the claim in the PCT Request form or by the presence of the claim on the front page of the published international application.

    1893.03(d)

    —Revised to change "lack of unity of invention requirement" to "unity of invention requirement" and to change "the claims lack unity of invention" to "the claims do not meet the unity of invention requirement." Added a WIPO website address and mention of the Patent Examiner's Toolkit for the International Search and Preliminary Examination Guidelines. Changed "lack unity of invention" to "do not meet the unity of invention requirement."

    1893.03(e)

    —Changed "forwarded" to "communicated" and revised Subsection I to indicate that "The publication may also include other items as set forth in PCT Rule 48."

    —Revised subsection II to remove an indication that a sample copy of PCT/DO/EO/903 is reproduced at the end of MPEP § 1893.03(a) and to remove the indication that with respect to annexes that have been entered, the National Stage Processing Division will write in pencil on any original sheet that it was replaced by an Article 34 amendment.

    1893.03(g)

    —Revised the discussion to address supplementary international search reports under PCT Rule 45bis.

    1895

    —Revised to update the description of a "bypass application."

    1895.01

    —Revised to indicate applications that are filed under 35 U.S.C. 111(a) and claim the benefit of the filing date of an international application which designates the United States are often referred to as "bypass" applications. Further revised to include an indication that the specific reference to the international application must be in an application data sheet for continuing applications having a filing date on or after September 16, 2012. Further revised to update cross-references to specific locations within 37 CFR 1.55, 37 CFR 1.78, and MPEP Chapter 200.

    —Revised to include references to the requirements of 37 CFR 1.55(h) and (i) and to include a discussion of restoration of the right of priority under 37 CFR 1.55(c).

    1896

    Pertaining to revisions made in the "Chart of Some Common Differences":

    —For the filing date of national applications filed under 35 U.S.C. 111(a), the chart now indicates "see 37 CFR 1.53(b)."

    The row directed to the date the application was "filed in the United States" for prior art purposes under 35 U.S.C. 102(e) has been deleted.

    —Regarding claiming priority under 35 U.S.C. (a)-(d), the information for both 111(a) and 371 applications has been updated so it is consistent with revised 37 CFR 1.55.

    —The row that was directed to "Reference to Application in Declaration" has been deleted.

    —The row that was directed to "Copendency with International Application" has been deleted.

    1896

    Pertaining to revisions made in subsections I-VI:

    —Revised subsection I to indicate "except as provided in 35 U.S.C. 111(c)."

    —Revised to delete subsection II, "Effective date as a reference," and to renumber former subsections III-V as II-IV.

    —Revised original subsection III (renumbered as subsection II) for consistency with revised 37 CFR 1.55 and to eliminate a discussion of the processing of paper copies of priority documents.

    —Revised original subsection III (renumbered as subsection II) to move to MPEP § 1893.03(c) the instructions about what to do when a certified copy of the priority document is not in the national stage application file but applicant asserts that a certified copy of the priority document was timely furnished under PCT Rule 17.

    —Revised original subsection IV (renumbered as subsection III) to delete "(which entered the national stage from international applications after compliance with 35 U.S.C. 371)" following "U.S. national stage applications" and to delete "(effective May 1, 1993)" after "1.499."

    —Original subsection VI, entitled "Reference to application in declaration," has been deleted.

    [top]

      

    CHAPTER 2100 (November 2015):

    2131.03

    —Revised title of subsection II to add the word "approaching" to clarify that the discussion therein pertains to prior art which teaches a range overlapping, approaching, or touching the claimed range.

    2144.05

    —Revised section title to read “Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.”

    —In subsection I, revised subsection title to read "Overlapping, Approaching, and Similar Ranges, Amounts, and Proportions." Added a quotation from Titanium Metals Corp. of America to the parenthetical that discusses the decision. Added citations to, and discussions of, Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997); In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955); In re Waite, 168 F.2d 104 (CCPA 1948); In re Scherl, 156 F.2d 72 (CCPA 1946); In re Swenson, 132 F.2d 1020 (CCPA 1942); In re Bergen, 120 F.2d 329 (CCPA 1941); In re Becket, 88 F.2d 684 (CCPA 1937); In re Dreyfus, 73 F.2d 931 (CCPA 1934); In re Lilienfeld, 67 F.2d 920 (CCPA 1933); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. Appx. 906 (Fed. Cir. 2014); and Gentiluomo v. Brunswick Bowling and Billiards Corp., 36 Fed. Appx. 433 (Fed. Cir. 2002) (non-precedential).

    —In subsection II, revised subsection title to read "Routine Optimization."

    —In subsection II.A, added citations to, and discussions of,Smith v. Nichols, 88 U.S. 112 (1874); In re Williams, 36 F.2d 436 (CCPA 1929); and KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).

    —In subsection II.B, revised subsection title to read “There is a Motivation to Optimize Result-Effective Variables,” revised the explanation of In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); deleted the citation to, and explanation of, In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA); and added a citation to, and explanation of, KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).

    —In subsection III, added subsection heading "A. Showing That the Change is Critical" at the beginning of the subsection and added subsection heading "B. Showing That the Prior Art Teaches Away" preceding the final two paragraphs of subsection III.

    —In subsection III.A, added citations to, and explanations of, Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 (1916); In re Scherl;In re Becket;In re Lilienfeld; and In re Wells, 56 F.2d 674 (CCPA 1932).

    2161

    —In subsection II, clarified the explanation of Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 114 USPQ2d 1349 (Fed. Cir. 2015).

    2161.01

    —In subsection I, added a quotation from Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559 43 USPQ2d 1398,(Fed. Cir. 1997) in a parenthetical following the case citation.

    —In subsection III, expanded the explanation of MagSil Corp. v. Hitachi Global Storage Technologies, Inc., 687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir. 2012). Also revised parenthetical describing Convolve, Inc. v. Compaq Computer Corp., 527 F.App’x 910 (Fed. Cir. 2013) to explain that the decision affirmed a grant of summary judgment of invalidity due to lack of enablement.

    2163

    —Revised subsection I.A to add cross-references to MPEP § 2106 for guidance on subject matter eligibility of claims directed to genes or other biomolecule sequences.

    —In subsection II.A, in the second paragraph, added a citation to, and explanation of, Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007). In subsection II.A.1, first paragraph, clarified the parenthetical describing In re Katz Interactive Call Processing Patent Litigation.

    —In subsection II.A.3(a), replaced the example that followed the citation to Enzo Biochem, 323 F.3d at 964, 63 USPQ2d at 1613 with an expanded discussion of the Enzo Biochem decision. Also revised to clarify that the antibody at issue in Noelle v. Lederman was an unknown antibody, and that the antigen in Centocor Ortho Biotech, Inc. v. Abbott Laboratories was characterized in the prior art.

    2181

    —Revised to provide the full citation for Williamson v. Citrix Online, LLC, 792 F.3d 1339, 115 USPQ2d 1105 (Fed. Cir. 2015) and corrected the year in the citation to Watts v. XL Systems, Inc.

    [top]

      

    CHAPTER 2100 (October 2015):

    Passim

    Corrected reproduced 35 U.S.C. 103 (pre-AIA) by removing "of this title."

    2103

    —In subsection I.C, corrected the citation of Griffin v. Bertina.

    —In subsection III.A, added discussion of and citations to Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 110 USPQ2d 1976 (2014) and Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012). Deleted discussion of and citations to Rubber Tip Pencil Co. v. Howard and Mackay Radio & Telegraph Co. Modified the discussion of Bilski v. Kappos to remind examiners that software and business methods are not excluded categories of subject matter. Deleted the cross-reference to MPEP § 2106.01. Modified the cross-reference to MPEP § 2107 to clarify that utility is a separate requirement from eligibility under 35 U.S.C. 101.

    —In subsection IV.A, in the third paragraph, clarified that the scope of a "means" limitation is defined by the inventor in the written description and equivalents thereof that perform the claimed function.

    2104

    —Revised to state that 35 U.S.C. 101 has four requirements. Added as a requirement that the inventor(s) must be the applicant in an application filed before September 16, 2012, and that the inventor or each joint inventor must be identified in an application filed on or after September 16, 2012. Added cross-reference to MPEP § 2137.01 for a detailed discussion of inventorship. Further added explanation that failure to identify the inventor(s) in an application filed on or after September 16, 2012 is a basis for a rejection under 35 U.S.C. 101 and 115.

    2105

    —Modified to include subsection headings. Revised and reorganized to set forth policies and procedures consistent with 2014 Interim Guidance on Patent Subject Matter Eligibility,79 FR 74618 (December 16, 2014), 1410 OG 50 (January 6, 2015) and an Office memorandum "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," signed June 25, 2014. For example, added more explanation pertaining to the holding and scope of the Chakrabarty opinion and an explanation of and citation to In re Roslin Institute (Edinburgh), 750 F.3d 1333, 110 USPQ2d 1668 (Fed. Cir. 2014).

    2106

    —Revised to set forth policies and procedures consistent with 2014 Interim Guidance on Patent Subject Matter Eligibility,79 FR 74618 (December 16, 2014), 1410 OG 50 (January 6, 2015) and an Office memorandum "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," signed June 25, 2014.

    —In subsection I, revised the list of non-limiting examples of claims that are not directed to one of the statutory categories to delete "a naturally occurring organism …" and to add "data per se" with a citation to Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 111 USPQ2d 1717 (Fed. Cir. 2014).

    —Subsection II revised to include citations to Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 110 USPQ2d 1976 (2014); Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012); and the 2014 Interim Guidance on Patent Subject Matter Eligibility,79 FR 74618 (Dec. 16, 2014) and related materials available on the USPTO website.

    —In subsection II, added the subheading "Analysis of Subject Matter Eligibility" and an explanation that if a claim is directed to a judicial exception, it must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination, are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself. Deleted the citation to Ultramercial v. Hulu, 657 F.3d 1323 (Fed. Cir. 2011) and deleted the analysis previously set forth in subsections II.A and II.B in their entirety. Added an explanation that the 2014 Interim Guidance on Patent Subject Matter Eligibility and related materials provide a detailed discussion of the analysis required to determine whether a claim is directed to patent-eligible subject matter.

    —In subsection III, changed "physical phenomenon" to "natural phenomenon" and "a practical application of an abstract idea" to "significantly more than an abstract idea." Additional changes made to improve readability.

    2106.01

    —Section removed and reserved.

    2107.01

    —Revised to state that 35 U.S.C. 101 has four requirements. Added as a requirement that the inventor(s) must be the applicant in an application filed before September 16, 2012, and that the inventors must be identified in an application filed on or after September 16, 2012. Added cross-reference to MPEP § 2137.01 for a detailed discussion of inventorship.

    2111

    —Added a supporting citation to In re Suitco Surface, Inc., 603 F.3d 1255, 1259, 94 USPQ2d 1640, 1643 (Fed. Cir. 2010).

    —Added a new paragraph to clarify the differences between claim interpretation made during examination and court proceedings, including supporting citations to In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) and In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1321-22 (Fed. Cir. 1989).

    —Revised text to clarify that the broadest reasonable interpretation must be consistent with the ordinary and customary meaning of the term (unless there is an explicit special definition) as used in the specification and drawings.

    2111.01

    —In subsection I, deleted the first two sentences of the third paragraph that discussed broadest reasonable construction and moved the references to In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) and Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 69 USPQ2d 1857 (Fed. Cir. 2004) to the first paragraph.

    —In subsection II, corrected a citation of 35 U.S.C. 112(a) to 112(f) and clarified that the structure, material or acts corresponding to the function should determine the meaning of the claim limitation. In subsection IV, revised text to clarify that applicant must set forth any special definitions "in the specification at the time of filing." Deleted the reference to In re Weiss, 989 F.2d 1202 (Fed. Cir. 1993).

    —In subsection III, deleted text following the citation to, and explanation of, Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 67 USPQ2d 1132 (Fed. Cir. 2003), except for the citation to Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996). Added references to In re Abbott Diabetes Care Inc., 696 F.3d 1142, 104 USPQ2d 1337 (Fed. Cir. 2012); In re Suitco Surface, Inc., 603 F.3d 1255, 1260-61, 94 USPQ2d 1640, 1644 (Fed. Cir. 2010); and 3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 107 USPQ2d 1717 (Fed. Cir. 2013).

    —Revised title of subsection IV to read "Applicant May Be Own Lexicographer and/or May Disavow Claim Scope." Added paragraph explaining that the only exceptions to giving the words in a claim their ordinary and customary meaning in the art are (1) when the applicant acts as his own lexicographer; and (2) when the applicant disavows or disclaims the full scope of a claim term in the specification. Included supporting references to Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); Starhome GMBH v. AT&T Mobility LLC, 743 F.3d 849, 109 USPQ2d 1885 (Fed. Cir. 2014); and Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 101 USPQ2d 1457 (Fed. Cir. 2012).

    —In subsection IV, added new subsection heading "A. Lexicography" and revised text therein to add a discussion of Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 78 USPQ2d 1705 (Fed. Cir. 2006) and to clarify the explanation of Merck & Co. v. Teva Pharms. USA, Inc.

    —In subsection IV, added new subsection "B. Disavowal" to clarify disavowal or disclaimer of claim scope and to add citations to and explanations of SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed.Cir.2001); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359 (Fed. Cir. 2004); and In re Abbott Diabetes Care Inc., 696 F.3d 1142, 104 USPQ2d 1337 (Fed. Cir. 2012).

    —Added new subsection V, including a flowchart to assist the examiner in proper claim interpretation decisions.

    2111.04

    —Added an explanation of, and citation to, In re Giannelli, 739 F.3d 1375, 109 USPQ2d 1333 (Fed. Cir. 2014) and moved the parenthetical quoting Minton v. Nat'l Ass'n of Securities Dealers, Inc., to the end of the last sentence.

    2111.05

    —Revised the titles of subsections I, I.A, and II to clarify that the functional relationship discussed is between printed matter and an associated product (or process).

    —In subsection III, added that a claim directed to computer readable medium storing instructions or executable code that recites an abstract idea must be evaluated under 35 U.S.C. 101.

    2112

    —In subsection II, added a citation to, and explanation of, In re Omeprazole Patent Litigation, 483 F.3d 1364, 82 USPQ2d 1643 (Fed. Cir. 2007).

    —In subsection IV, deleted the citation to, quote to, and explanation of, In re Robertson, 169 F.3d 743 (Fed. Cir. 1999).

    —Revised the title of subsection V to clarify that the burden of production shifts to the applicant when the examiner presents evidence or reasoning showing inherency, and added an additional citation to In re Best, 562 F.2d 1252 (CCPA 1977) in the first paragraph.

    2112.01

    —In subsection II, moved the citation to In re Spada, 911 F.2d 605 (Fed. Cir. 1990) to after the first sentence.

    —In subsection III, expanded the discussion of In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004) and added citations to, and explanation of, In re Miller, 418 F.2d 1392 (CCPA 1969); In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947); In re Xiao, 462 Fed. Appx. 947 (Fed. Cir. 2011); and In re Bryan, 323 Fed. Appx. 898 (Fed. Cir. 2009) regarding printed matter. Also, added an explanation of, and citations to, King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 95 USPQ2d 1833 (2010) and In re Kao, 639 F.3d 1057, 98 USPQ2d 1799 (Fed. Cir. 2011) pertaining to "instruction" limitations in method claims.

    2112.02

    —Revised to number the subsections "I" and "II," and in subsection II, added "obviousness" before "rejection of claims 2-5 and 7-10."

    2114

    —Revised title of subsection I to clarify that the text therein discusses inherency and functional limitations in apparatus claims. Subsection I further revised the discussion of In re Schreiber, explaining that to establish a prima facie case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. Added supporting citations to Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629,100 USPQ2d 1433 (Fed. Cir. 2011) and In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971).

    —Quotation from Hewlett-Packard Co. v. Bausch & Lomb Inc. moved from subsection I to subsection II.

    —In subsection III, deleted the citation to In re Ruskin, 347 F.2d 843 (CCPA 1965).

    —In subsection IV added references to In re Translogic Technology, Inc., 504 F.3d 1249, 84 USPQ2d 1929 (Fed. Cir. 2007); Intel Corp. v. U.S. Int'l Trade Comm'n, 846 F.2d 821, 20 USPQ2d 1161 (Fed. Cir. 1991); Nazomi Communications, Inc. v. Nokia Corp., 739 F.3d 1339, 109 USPQ2d 1258 (Fed Cir. 2014); and Intel Corp. v. U.S. Int'l Trade Comm’n, 846 F.2d 821, 20 USPQ2d 1161 (Fed. Cir. 1991).

    2115

    —Revised the explanation of In re Otto, 312 F.2d 937 (CCPA 1963), including adding a new paragraph describing the claimed invention. Deleted the last sentence pertaining to the application of the discussed cases to product or kit claims.

    2116

    —Section removed and reserved.

    2127

    —In subsection II.A, corrected the citation of 35 U.S.C. 102(a)(2) to 35 U.S.C. 102(a)(1).

    2128.01

    —In subsection IV, correct the quotation from footnote 4 in In re Klopfenstein at 380 F.3d, 1345, 1349. Added a citation to Diomed, Inc. v. Angiodynamics, 450 F.Supp.2d 130 (D. Mass. 2006), wherein the court held that a video that accompanied oral presentations was not a printed publication. Moved text regarding oral presentations being prior art under 35 U.S.C. 102(a)(1) and the cross-reference to MPEP § 2125.02(e) to the last paragraph.

    2133

    —Replaced "Express Mail" with "Priority Mail Express®."

    2137.01

    —Revised text in first two paragraphs to clarify the inventorship requirement for both AIA and pre-AIA applications. Changed cross-references to MPEP § 602.01(c) and MPEP § 706.03(a).

    2141

    —Corrected pre-AIA 35 U.S.C. 103 by deleting "of this title."

    2142 and 2144

    —Corrected the spelling of In re Lintner.

    2144.08

    —In subsection II.A.4(a), deleted the parenthetical about Baird, and in subsection II.A.4(d), corrected the spelling of In re Lintner.

    2155

    —Updated 37 CFR 1.130(d).

    2157

    —Removed Editor Note, added cross references to MPEP § 602.01(c) et seq. and MPEP § 706.03(a), and added text to clarify that a rejection under pre-AIA 35 U.S.C. 102(f) should be not made if the application is subject to the first inventor to file provisions of the AIA and to cross-reference MPEP §§ 2159 and 2137.

    2158

    —Updated the website address for the Office's KSR training materials.

    2161

    —In subsection II, added a citation to, and discussion of, Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 114 USPQ2d 1349 (Fed. Cir. 2015).

    2161.01

    —Revised the first paragraph to limit the cross-references to other MPEP sections to those necessary in the context of the subject matter of this section.

    —In subsection I, added a citation to LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 76 USPQ2d 1724 (Fed. Cir. 2005), reorganized the discussion of Ariad, and deleted the citation and discussion of In re Hayes Microcomputer Prods., Inc. Also, added new text at the end of subsection I to clarify that rejections under 35 U.S.C. 112(b) may be made in addition to a written description rejection, and included a supporting citation to In re Donaldson Co., 16 F.3d 1189,29 USPQ2d 1845 (Fed. Cir. 1994).

    —In subsection III, added citations to, and discussion of, Magsil Corp. v. Hitachi Global Storage Technologies, 687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir. 2012) and Convolve, Inc. v. Compaq Computer Corp., 527 F.App'x 910 (Fed. Cir. 2013).

    2163

    —In subsection I, added a citation to Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 94 USPQ2d 1161 (Fed. Cir. 2010) as additional support for the statement that the written description requirement is separate and distinct from the enablement requirement.

    —In the text preceding subsection I.A, deleted text that discussed new matter issues (such issues are discussed in more detail in subsection I.B) and deleted redundant text pertaining the question of adequate written description when a "claim limitation has been added or removed" in a new or amended claim.

    —In subsections I.A and II.A, deleted "strong" before presumption to more accurately reflect the supporting court citation.

    —In subsection II.A, added text to clarify that to make a prima facie case the examiner must point out the claim limitations that are not adequately supported and explain any other reasons the claim is not fully supported, including supporting citations to Hyatt v. Dudas, 492 F.3d 1365, 83 USPQ2d 1373 (Fed. Cir. 2007) and Stored Value Solutions, Inc. v. Card Activation Technologies, 499 Fed.App'x 5 (Fed. Cir. 2012). Also added a citation to AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014) as additional support for the statement that whether the written description requirement is satisfied is a question of fact.

    —In subsection II.A.1, added a citation to In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 97 USPQ2d 1737 (Fed. Cir. 2011). In subsection II.A.2, added a new last sentence to clarify that sufficient information must be provided to show that the inventor had possession of the invention as claimed.

    —In subsection II.A.3(a), deleted the citation to Fonar Corp. v. Gen. Elec. Co., and added references to Centocor Ortho Biotech, Inc. v. Abbott Laboratories, 636 F.3d 1341, 97 USPQ2d 1870 (Fed. Cir. 2011); Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 86 USPQ2d 1235 (Fed. Cir. 2008); Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 53 USPQ2d 1225 (Fed. Cir. 1999); and Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 83 USPQ2d 1118 (Fed. Cir. 2007). Also, added new text to clarify that when rejections under 35 U.S.C. 112(b) are made for means (or step) plus function claims based on failure of the specification to disclose sufficient corresponding structure, materials, or acts that perform the claimed function, a rejection for lack of adequate written description should also be made.

    —In subsection II.A.3(a)(i), in paragraph (C)(2), limited the example to the biotech art because the discussion therein regarding a structure-function correlation would not necessarily apply to other arts, such as some computer-related arts. Deleted citations to Fonar Corp. v. Gen. Elec. Co. and In re Hayes Microcomputer Prod., Inc. Patent Litigation. In subsection II.A.3(a)(ii), added citations to and explanation of AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014). Deleted the statement that what constitutes a representative number is an inverse function of the skill and knowledge in the art.

    —In the title of subsection II.A.3(b), changed "365(c)" to "365" and added "386" to address priority/benefit claims to international design applications.

    2163.03

    —Deleted the references to Regents of the Univ. of Cal. V. Eli Lilly, 119 F.3d 1559 (Fed. Cir. 1997) and In re Wertheim, 541 F.2d 257 (CCPA 1976). Added new subsections V. Original Claim not Sufficiently Described, and VI. Indefiniteness Rejection of a Means- (or Step-) Plus-Function Limitation.

    2163.05

    —In subsection I.B, added a citation to AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014). In subsection II, added a citation to Rozbicki v. Chiang, 590 Fed.App'x 990 (Fed. Cir. 2014).

    2164.06(a)

    —In subsection I, added a new first paragraph discussing MagSil Corp. v. Hitachi Global Storage Technologies Inc., 103 USPQ2d 1769 (Fed. Cir. 2012) and Auto. Techs. Intl, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007).

    2164.06(c)

    —In subsection II, added text to clarify that programmed steps, algorithms or procedures that the computer performs to accomplish a claimed function can be described in any way that would be understood by one of ordinary skill in the art.

    2173.01

    —In subsection I, added discussion of In re Bigio, 381 F.3d 1320, 72 USPQ2d 1209 (Fed. Cir. 2004).

    2173.02

    —In subsection I, revised subsection title and added discussions of and citations to Nautilus, Inc. v. Biosig Instruments, Inc., 527 U.S. __, 110 USPQ2d 1688 (2014); In re Packard, 751 F.3d 1307, 110 USPQ2d 1785 (Fed. Cir. 2014); In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007); In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984); and In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989). Also, added a cross reference to MPEP § 2111 et seq.

    —In subsection I, deleted citations to Ex parte Miyazaki, 89 USPQ2d 1207, 1212 (Bd. Pat. App. & Int. 2008); In re Am. Acad. Of Sci. Tech Center, 367 F.3d 1359 (Fed. Cir. 2004); Exxon Research and Eng'g Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001), and Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354 (Fed. Cir. 2004).

    —Subsection II revised to add the court's analysis in In re Packard of the particularity and distinctness requirement for claims as set forth in 35 U.S.C. 112(b). Deleted citation of Orthokinetics Inc. v. Safety Travel Chairs, Inc. Also deleted citation to and explanation of Bancorp Services, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367 (Fed. Cir. 2004) and the discussion of the test for definiteness from the final paragraph of subsection II.

    —In subsection III.A, added "prima facie" before "indefinite" in the first paragraph. In subsection III.B, added citation to In re Packard in the context of making an indefiniteness rejection final and responding to indefiniteness rejections, and deleted reference to In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009). Subsection III.B further revised to clarify that applicants should respond to rejections by explaining that claim language would be recognized by a person of ordinary skill in the art as definite, and that examiners are encouraged to suggestion changes to the claims to improve clarity or precision.

    2173.03

    —Deleted reference to Bancorp Services, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367 (Fed. Cir. 2004).

    2173.04

    —Deleted reference to Ultimax Cement Mfg. v. CTS Cement Mfg., 587 F.3d 1339 (Fed. Cir. 2010) and inserted a citation to In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) with text explaining that a broad claim is not indefinite merely because it encompasses a wide scope if it is clearly defined.

    2173.05(a)

    —In subsections I and II, added citations to, and discussion of, In re Packard, 751 F.3d 1307, 110 USPQ2d 1785 (Fed. Cir. 2014).

    —In subsection II, deleted citations to, and discussion of, Shatterproof Glass Corp. v. Libbey Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985) and Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986).

    2173.05(b)

    —In subsection I, added "[t]erms of degree are not necessarily indefinite" as the first sentence, and added citations to, and explanation of, Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 112 USPQ2d 1188 (Fed. Cir. 2014); and Ex parte Oetiker, 23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992). Deleted the citations to Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007); and Exxon Research and Eng'g Co. v. United States, 265 F.3d 1371, 60 USPQ2d 1272 (Fed. Cir. 2001).

    —In subsection II, moved former subsections II.A through II.E to new subsections III.A through III.E. Deleted subsection II.F and moved the discussion of Ex parte Oetiker to subsection I, the citation of Ex parte Anderson to subsection III, and the citation of Ex parte Caldwell to MPEP 2173.05(d).

    —Added new subsection heading III. Approximations and inserted thereunder the text of former subsections II.A through II.E.

    —Renumbered former subsection heading III as subsection IV and added citations to, and explanation of, Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 112 USPQ2d 1188 (Fed. Cir. 2014); Ex parte Anderson, 21 USPQ2d 1241 (Bd. Pat. App. & Inter. 1991); and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1261 (Fed. Cir. 2014).

    2173.05(d)

    —Added new item (E), including a citation to Ex parte Caldwell, 1906 C.D. 58 (Comm'r Pat. 1906).

    2173.05(e)

    —Added citation to In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) after the first sentence. Deleted citation to, and explanation of, Energizer Holdings, Inc. v. Int'l Trade Comm'n, 435 F.3d 1366 (Fed. Cir. 2006).

    2173.05(g)

    —Added a citation to, and discussion of, Datamize LLC v. Plumtree Software Inc., 75 USPQ2d 1801 (Fed. Cir. 2005) and changed "Keep in mind…" to read "Examiners should keep in mind…."

    2173.06

    —In subsection I, added citation to, and discussion of, In re Packard, 751 F.3d 1307, 110 USPQ2d 1785 (Fed. Cir. 2014).

    2181

    —In subsection I, deleted the citations to Lighting World, Inc. v. Birchwood Lighting, Inc., and Inventio AG v. Thyssenkrupp Elevator Americas Corp. Revised text to state that the presumption that 35 U.S.C. 112(f) does not apply can be overcome when the claim fails to recite sufficient definite structure to accomplish the function. Added supporting citations to Williamson v. Citrix Online, LLC, ___F.3d ____, 115 USPQ2d 1105, 2015 WL 3687459, at *6-7 (Fed. Cir. 2015); Watts v. XL Systems, Inc., 232 F.3d 877 (Fed. Cir. 2001); and Personalized Media Communications, LLC v. International Trade Commission, 161 F. 3d 696 (Fed. Cir. 1998). Also added text setting forth the standard to determine if the claim has a sufficiently definite meaning, with supporting citations to Williamson and Greenberg v. Ethicon Endo-Surgery, Inc.

    —In subsection I.A, second paragraph, revised the phrase "understand the term to be the name" to read "understand the term to have a sufficiently definite meaning as the name." Added a discussion of Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 80 USPQ2d 1225 (Fed. Cir. 2006). In the fifth paragraph, deleted the last two sentences, including a reference to In re Morris. In the sixth paragraph, added "or other linking word" after "word 'for'".

    —In subsection I.C, revised "sufficient structure" to read "sufficiently definite structure." Also added a discussion of Mass. Inst. of Tech., and a reference to Williamson v. Citrix Online, LLC.

    2185

    —Added new paragraph (B) indicating that if a means- (or step-) plus-function limitation in a claim is not supported by corresponding structure, material or acts in the specification disclosure, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as lacking adequate written description should be considered. Redesignated paragraphs (B) and (C) to (C) and (D), respectively.

    [top]

      

    CHAPTER 2200:

    2201

    —Revised cross-reference description to read "See MPEP Chapter 2800 for guidance on the procedures for supplemental examination proceedings, and for procedures regarding the order and first Office action mailed in any ex parte reexamination proceeding ordered as a result of a supplemental examination proceeding."

    —In the penultimate paragraph, deleted the word "original" modifying "requests."

    2202

    —Corrected 37 CFR 1.902.

    2203

    —In the fourth paragraph, deleted the second and third sentences discussing keeping identity confidential and modified the last sentence to clarify that it applied to persons other than reexamination requesters.

    —Added a new paragraph to clarify the procedures for keeping a requester's identity confidential and to mirror language in MPEP § 2214.

    2204

    —Revised the first paragraph to insert "generally" prior to "the length of the term of the patent," and to replace "citations" with "submissions."

    —Deleted the last sentence in the first paragraph because it discussed discontinued procedures.

    2205

    —Revised to indicate that no fee is required for a submission under 37 CFR 1.501 (rather than "a submission of citations"); submissions under 37 CFR 1.501 are no longer limited to citations under 35 U.S.C. 301.

    —In the paragraph before the examples, added "discarded, or closed" after "returned to the sender" to reflect current Office procedures for handling an improper submission.

    2206

    —Modified text regarding a submission after the date an order for reexamination is granted to state that such a submission will be stored until reexamination is concluded.

    —Revised to replace "citation(s)" with "submission(s)" throughout section in order to apply requirements to both prior art citations and written statement filings.

    —In subsection I.A.1, revised "reexamination file" to "patent file" to reflect current processing. In subsection I.A.2, deleted the example as outdated.

    —In subsections II.A.1 and II.A.2, revised text by adding "discarded, or closed if advertently entered into the file" as alternatives to returning the submission to sender to reflect current Office procedures for handling an improper submission.

    2207

    —In the second paragraph, deleted the text "It is to be understood that highlighting" and inserted "Highlighting" in the same place.

    2208

    —Added "and written statements under 35 U.S.C. 301" at the end of the sentence cross-referencing MPEP § 2206.

    2209

    —In the second paragraph, deleted the last sentence about prosecution being reopened as it reflected outdated procedures.

    —In the listing of the basic characteristics of ex parte reexamination, modified text in item (B) to clarify that the Office may also consider double patenting issues as discussed in MPEP § 2258 and added a parenthetical about ex parte reexamination ordered under 35 U.S.C. 257; in item (E) added a parenthetical about supplemental examination and ex parte reexamination ordered under 35 U.S.C. 257; and in item (I) added text to explain that images of non-patent literature are not viewable through Public PAIR and that such copies are available from the Office of Public Records and may be ordered online.

    —Added a cross reference to MPEP § 2803.02.

    2210

    —Added "AIA" prior to the citation to 35 U.S.C. 315 to clarify that it is the provision in effect on or after September 16, 2012.

    2211

    —Clarified text by moving text from the last paragraph into the middle of the first paragraph.

    2212

    —Added "AIA" prior to the citation to 35 U.S.C. 315 to clarify that it is the provision in effect on or after September 16, 2012. Added cross-references to MPEP §§ 1401-1403 and §§ 2801-2803.

    2213

    —Deleted the third paragraph "If an attorney or agent files a request for reexamination …" because it inaccurately implied that the attorney or agent is estopped, rather than the real party in interest for the request.

    2214

    —In the discussion about the requirement for a copy of every patent or printed publication, added a sentence to clarify that there is a waiver for copies of U.S. patents and U.S. patent application publications.

    —Added "AIA" prior to the citation to 35 U.S.C. 315 to clarify that it is the provision in effect on or after September 16, 2012.

    —In the penultimate paragraph, deleted "since a reexamination proceeding is not an 'application'" and inserted in its place "except as provided in MPEP § 2258.02" because the current rules pertaining to foreign priority and domestic benefit require an application data sheet in some situations.

    —Inserted an updated version of PTO/SB/57.

    2215

    —Modified text to clarify that only a patent owner requester can establish micro entity status.

    —Revised to include written statements under 37 CFR 1.501 in the reference to prior art citations by replacing "prior art citations" with "submission under 37 CFR 1.501" and similar corresponding changes.

    2216

    —In the first paragraph, clarified that the substantial new question of patentability must be in view of patents and printed publications cited under the provisions of 35 U.S.C. 302.

    2217

    —Inserted "inventor" in the phrase "the first-inventor-to-file."

    2218

    —Deleted paragraph that stated it is helpful to include copies of prior art considered during earlier prosecution as no longer necessary.

    —Revised text to clarify that the waiver of the copy requirement in 37 CFR 1.510(b)(3) brings the regulation in line with 37 CFR 1.98.

    2219

    —Added "or derivation" after "interference" to include derivation proceedings created by the AIA.

    2220

    —Added the phrase "of a request filed under 35 U.S.C. 302" after "requester" in the first sentence.

    2221

    —Added the phrase "Filed under 35 U.S.C. 302" in the section title.

    2222

    —Updated 37 CFR 1.33(c). Added text indicating that there is one power of attorney form for patent owners and another form for third party requesters. Included updated samples of both forms.

    2223

    —Updated sample of form PTO/SB/83.

    2225

    —Removed the citation to 37 CFR 1.915 because inter partes reexaminations can no longer be filed.

    2226

    —Added the phrase "Filed under 35 U.S.C. 302" in the section title.

    2227

    —In subsection A.2, deleted "third party" modifying requesters in two places because the policy applies to both third party and patent owner requesters.

    —In subsection B, revised language in two places to remove reference to a "memo" drafted by an examiner and instead state that the examiner will communicate with his or her supervisor, who will discuss the issues with a legal advisor in the Office of Patent Legal Administration (OPLA). Clarified text that the Central Reexamination Unit will draft a Decision Vacating the Proceeding, which will be reviewed and signed by the Office of Patent Legal Administration.

    2229

    —Deleted sentence regarding the location of requests filed because such procedures are discontinued.

    2230

    —Added "filed under 35 U.S.C. 302" after "a request for reexamination" in the second sentence.

    2231

    —Deleted references to "the preprocessing area" and "reexamination preprocessing" staff as outdated.

    2232

    —Revised text to update instructions for searching for a reexamination proceeding in Public PAIR.

    2232.01

    —Modified text to delete outdated instructions on how to access PAIR using the Internet.

    2233

    —In subsection I, added a citation to 37 CFR 1.20(c)(6) for petition fees and added text to clarify that micro entity reductions are only available for patent owners.

    2234

    —Deleted text, including items (A)-(G), that describes the entry of amendments because such procedures have been discontinued.

    2235

    —In item (A), deleted the intranet address as it is subject to change and to add "PTOWeb" as the name for the intranet site.

    —In item (B), deleted the phrase "while patent applications have status codes ranging from '020' to over '100'" because it no longer accurately reflects current status codes.

    —In item (C), text is revised to indicate that any paper patent file will be ordered and scanned into the Image File Wrapper; deleted text concerning the location of the physical files.

    —In item (D), clarified that the items provided are examples of reported events and added a parenthetical regarding the PALM system or the Office of Petitions tracking system.

    —In item (E), deleted most of the listed reports because they are no longer generated and added two new reports in addition to adding that PALM reports are provided to the CRU and appropriate Technology Centers.

    2236

    —Clarified that in the rare situation where a reexamination has been assigned to an assistant examiner, a primary examiner must sign all actions, conference all actions with a SPRS or manager and another examiner, and take responsibility for all actions taken.

    —In subsection I, clarified that the CRU Director's approval may be indicated by his or her signature at the end of the order or Office action. Added "generally" in stating that the same examiner will generally be assigned the new reexamination to allow for some flexibility for managers in assigning work load.

    —In subsection I, revised text to eliminate certain references to the "TC" because reissues are handled by the Central Reexamination Unit in addition to the TCs.

    —In subsection I, modified text to reflect electronic processing. For example, replaced the application "reaches the TC" with "is available for docketing" in step (B)(1) in subsection I.

    2237

    —Deleted the sentence stating SPRS should hand carry any paper patent file to the transferee because it reflects discontinued paper processing procedures.

    2239

    —Modified text to reflect electronic processing. For example, deleted the phrase "patent file is then forwarded to the" CRU.

    —Updated text to reflect that OPLA and the CRU or TC work cooperatively to determine whether the Director should order reexamination under the provisions of 35 U.S.C. 303 and deleted guidance as to a "disk" containing the memorandum.

    —Deleted the phrase "or 37 CFR 1.915" at the end of the section because inter partes reexamination requests can no longer be filed.

    2240

    —Revised to reflect current policy that examiners do not typically have to request litigation search at the time of assignment of a reexamination proceeding.

    —In subsection II, clarified text that a second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer or certificate that has issued.

    2241

    —Deleted the sentences that described time frames for when an examiner takes up a proceeding and when any action should be mailed in order to give supervisors more flexibility in assigning and monitoring work load.

    2242

    —Changed "previous examination" to "earlier concluded examination or review" and expanded definition to include new proceedings, such as supplemental examination and post-grant reviews by the Board. Similar changes also made to form paragraph 22.01.01.

    —In subsection I, second paragraph, modified text to identify the different proceedings or examinations in which the same question of patentability may have already been decided or raised.

    —In subsection I, clarified text that a second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer or certificate that had issued.

    —In subsections I and II, added a sentence reading "Issues involving 35 U.S.C. 325(d) must be referred to the Director of the CRU."

    2243

    —Deleted sentence in the last paragraph pertaining to amended claims in copending proceeding because such merger policies are covered in MPEP §§ 2283-2285.

    2244

    —Added "under 35 U.S.C. 303(a)" after "determination" in the first sentence to distinguish from determinations made in supplemental examination.

    2245

    —Deleted the second paragraph which contained steps of discontinued paper processing.

    —Deleted "original" modifying "signed copy" in the last paragraph.

    2246

    —In item (D), modified "prior examination" to "earlier concluded examination or review" and "the Federal Courts" to "a federal court, and was not raised to or by the Office in a pending reexamination or supplemental examination of the patent" to include new proceedings, such as supplemental examination and post-grant reviews by the Board.

    —In the paragraph starting with "The decision granting the request …" deleted the phrase "is made on a decision form and" because the decision is more than just a form.

    —Modified text to reflect electronic processing. For example, replaced the examiner's decision is "hand-carried … to the CRU support staff for processing and mailing" with "processed and mailed" in subsection I.

    —In subsection II, in the penultimate paragraph, changed policy of filing the opposition "by facsimile transmission" to "electronically."

    —In subsection III, revised text regarding prior art citations submitted after the order for reexamination to refer to prior art citations and written statements and deleted the indication that they be stored as a separate file in a physical location (because this does not account for electronic processing).

    2247

    —In item (A), modified "earlier examination" to "earlier concluded examination or review of the patent, or raised to or by the Office in a pending reexamination or supplemental examination of the patent" to include new proceedings, such as supplemental examination and post-grant reviews by the Board.

    2247.01

    —In example 1, replaced copy of former form PTO-471 with updated form PTO-471G. In example 2, replaced copy of former form PTO-471 with updated form PTO-471D.

    2248

    —Modified text to reflect electronic processing. For example, replaced the examiner's decision is "forwarded … to the Office of the CRU Director for decision" with "brought to the attention of the CRU Director or his/her designee for decision."

    —Changed the first sentence in paragraph starting with "Reassignment will be …" to "In the situation in which the examiner's determination failed to find any SNQ, reassignment will be the general rule" in order to distinguish procedures from situations in which the examiner's determination is only a partial denial of some SNQs.

    —Revised the last paragraph to clarify that a petition under 37 CFR 1.181 may be filed within one month of the mailing date of the order if the examiner's determination partially denies the request based on any advanced SNQ, that a decision on such a petition is final and non-appealable, and that if no timely petition is filed, the examiner's determination is final and non-appealable. Added a citation to Belkin Int'l, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012).

    2249

    —In the paragraph beginning with "If reexamination is ordered…," deleted the last sentence stating that extensions of time will be granted only under extraordinary circumstances because such a statement fails to account for the new no-cause extensions of time for patent owners. Inserted a cross-reference to MPEP § 2265.

    2250

    —Updated 37 CFR 1.52 as amended by the PLT implementation rule. In subsection I.A, added the word "single" before "brackets" to clearly distinguish this requirement from reissue amendment practice. Also added a new sentence in the second paragraph indicating that presentation of the text of the paragraph to be deleted will assist the Office in proper entry of the amendment. Also added explanation of the importance of stating the precise point where each amendment is to be made. Deleted text that discussed discontinued paper processing.

    —In subsection I.D, revised form paragraph 22.13 so that the examiner will enter in the proper time period for response depending on whether the request was filed by a third party requester or the patent owner.

    —In subsection III, deleted text that discussed discontinued paper processing.

    —In subsection IV, under (A)(1) and (2), added "single" before "bracketing" to clarify proper amendment practice. Under (D) and (E), at the end of the first sentence, added "including the claim number and status indicator" to clarify that all text must be underlined for a new claim.

    2250.01

    —In the last paragraph, added text to explain that the time period for filing new drawing sheets depends on whether the request was filed by a third party requester or the patent owner. Clarified that the last sentence addresses the situation in which new drawing sheets are not filed "in response to the Quayle action."

    2250.02

    —Updated 37 CFR 1.530(l).

    2250.03

    —In subsection I, added a cross-reference to 37 CFR 1.20(c)(3) and (c)(4) following the first sentence. Revised the last paragraph to apply to responses to non-final actions, added text to explain that the time period for filing a correction depends on whether the request was filed by a third party requester or the patent owner, and added a sentence to address responses to final actions.

    2253

    —Inserted "under 35 U.S.C. 304" after "ordered" in the first sentence.

    2254

    —Updated 37 CFR 1.550 as amended by the PLT implementation rule. 37 CFR 1.550(c) was amended to provide for a no cause extension of time for patent owner requested or Director ordered examination.

    2255

    —In the second paragraph, added the phrase "after an examiner's determination that found the request did not raise any SNQ" and changed "will normally" to "will generally."

    2256

    —Changed "items of information" to "documents" because the former phrase is now used in supplemental examination and might be confusing.

    —Added "(B)" to the phrase "As to (B), (C) and (F) above."

    —Revised policies regarding the submission of prior art after a Notice of Intent to Issue ex parte Reexamination Certificate (NIRC) is mailed to reflect the Office's more recent publication procedures, i.e., the proceeding generally begins the publication (issue) cycle immediately after NIRC. To obtain entry, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, (B) an unequivocal statement that one or more claims are unpatentable, and (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. These requirements are similar to the requirements to withdraw an application from issue under 37 CFR 1.313(c)(1) and help the Office comply with the statutory mandate of special dispatch for reexaminations.

    2257

    —Revised to delete the statement that references will be printed on the reexamination certificate and instead state that a notice is printed on the reexamination certificate that the list of prior art documents is available via PAIR, which is in accord with current practice.

    2258

    —Added 37 CFR 1.625 as the basis to discuss ex parte reexamination procedures following a supplemental examination request.

    —In the first paragraph, added a sentence to indicate that double patenting issues may also be considered during reexamination. Following the first paragraph, added text to address the scope of reexamination ordered under 35 U.S.C. 257.

    —In subsection I, added text to clarify that the first-to-invent prior art regime may apply under the specified conditions if a benefit claim is made under reexamination to a prior application with a filing date before March 16, 2013. Deleted "in the chart" in the sentence prior to subsection I.A because no chart is presented.

    —In subsection I.B, added "(with respect to original subject matter)" after "insufficiency of disclosure" to clarify that issues under 35 U.S.C. 112 may be raised for new or amended subject matter.

    —In subsection I.C, added a citation to In re NTP, Inc., 654 F.3d 1268, 99 USPQ2d 1500 (Fed. Cir. 2011), which held that the Office is not prohibited from performing a 35 U.S.C. 112 written description priority analysis during reexamination.

    —In subsection I.D, in the third paragraph, added the clause "over prior art patents or non-prior art patents" in the second sentence. Added a new fourth paragraph that states that double patenting issues may be addressed in reexaminations ordered under 35 U.S.C. 257.

    —In subsection I.F.2, added a new last paragraph that reexaminations ordered under 35 U.S.C. 257 may involve an admission by the patent owner.

    —In subsection I.G, first paragraph, added text regarding claim construction where there is related litigation and a federal court has made a judicial interpretation of a disputed claim term. In the first sentence of the last paragraph, added the phrase "ordered under 35 U.S.C. 304, and also during reexamination ordered under 35 U.S.C. 257" to clarify that the broadest reasonable interpretation applies to both proceedings.

    —In subsection II, first paragraph, added text pertaining to a determination of whether the claimed invention is entitled to a particular priority date and a citation to In re NTP, Inc. Added a new second paragraph to state that reexaminations ordered under 35 U.S.C. 257 may involve any issues under 35 U.S.C. 112.

    —In subsection IV.A, in the second paragraph, clarified the text by replacing "a 'live' claim" with "a claim under reexamination which is."

    —In subsection IV.E, deleted the text and replaced with a cross-reference to MPEP § 2258.02.

    —In subsection IV.G, added "or derivation" after "interference" to provide for the new derivation proceedings.

    —In subsection IV.H, added "pre-AIA" before "35 U.S.C. 102(c)" to clarify which provision applies and deleted the clause suggesting the patent owner may file a reissue application because the clause gave an erroneous impression that reissues can always be filed to resolve issues outside the scope of reexamination. Similarly, revised form paragraph 22.03 to clarify text and to remove the suggestion to file a reissue application.

    2258.01

    —In form paragraph 22.01.01, changed "earlier examination" to "earlier concluded examination or review" and added "or has been raised to or by the Office in a pending reexamination or supplemental examination" to include new proceedings, such as supplemental examination and post-grant reviews by the Board.

    2258.02

    —New section added to describe procedures for correcting claims for foreign priority or domestic benefit during a reexamination proceeding.

    2259

    —Deleted the last sentence, inserted two new sentences regarding the application of claim preclusion (res judicata) to the Office in reexamination proceedings, and added references to In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007) and In re Construction Equipment Company, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011).

    2260

    —Inserted "in reexaminations ordered under 35 U.S.C. 304" after "issued" in the second sentence.

    2260.01

    —In the first paragraph, added, in two instances, a phrase pertaining to a claim no longer subject to reexamination. Also, in the first sentence, added the phrase "undergoing reexamination" after "any claim."

    2261

    —Deleted text that described time frames for when an examiner takes up a proceeding and when any action should be mailed in order to give supervisors more flexibility in assigning and monitoring work load.

    2262

    —In subsection I, added a cross-reference to MPEP § 2271.01 for more detailed information on conferences.

    2263

    —Deleted the second paragraph and revised the first paragraph to state that a shortened statutory period of two months will generally be set and extensions of time may be requested under 37 CFR 1.550(c) with a cross-reference to MPEP § 2265.

    2264

    —Revised the first paragraph to clarify mailing procedures to the patent owner and to delete the statement that multiple patent owners are each mailed a copy of the Office action because such statements are inconsistent with standard Office practice of only corresponding with a single representative or a single patent owner. In addition, deleted the reference to the PALM printer because such printers are no longer used. In the second paragraph, added a sentence to describe the mailing procedures when there is more than one third party requester for a request and if any requester failed to designate a mailing address of a registered practitioner as the correspondence address. In the third paragraph, deleted reference to "additional partial patent owner."

    2265

    —Updated 37 CFR 1.550(c) as amended by the PLT implementation rule

    —Added subsections I-VI. Subsection I contains former text explaining that the provisions of 37 CFR 1.136 are not applicable to ex parte reexamination proceedings. Subsection II explains the fees required for an extension of time. Subsection III provides general guidance on extensions of time, including the sufficient cause extension and automatic extension for patent owner requested reexaminations. Subsection IV discusses procedures for extensions of time in third party requested reexaminations. Subsection V explains extensions of time for patent owner requested and director ordered reexaminations, which have been revised to include an automatic two month extension as a result of implementation of the Patent Law Treaty (PLT). Subsection VI discusses the requirements for a showing of sufficient cause.

    —Renumbered former subsections I and II as subsections VII and VIII, respectively.

    —Renumbered subsection VII was modified to include the automatic two month extension of time for patent owner requested and director ordered reexaminations.

    2266

    —Updated 37 CFR 1.550 as amended by the PLT implementation rule.

    —Revised to clarify that the provisions of 37 CFR 1.136 do not apply in reexamination proceedings.

    —Revised the last paragraph to state that patent owners cannot submit an application data sheet (ADS) except as provided in MPEP § 2258.02 because an ADS is required in certain situations in order to claim foreign priority or domestic benefit as modified by the PLT implementation rule.

    2266.01

    —In item (B), added the phrase "including any extensions of the response period pursuant to 37 CFR 1.550(c)" to modify the response period to account for the no cause extension under 37 CFR 1.550(c).

    Revised references to time periods for response for consistency with response time changes in the implementation of the PLT.

    —Amended form paragraph 22.14 so that the examiner will enter in the proper time period for response depending on whether the request was filed by a third party requester or the patent owner.

    —In the last paragraph, deleted "closing prosecution" after "an action" because ex parte reexamination does not include "an action closing prosecution."

    2266.02

    —Revised text to discuss new form PTO-2311, which provides notification of a defect in submissions filed in a patent owner requested reexamination.

    —Modified the time period for response set in the final rejection from one month to two months.

    2266.03

    —Added text to clarify that form PTOL-475 is not mailed if an after-final response lacks proof of service. Instead, an advisory Office action will notify the patent owner of the lack of proof of service.

    2267

    —In subsection I, deleted text that pertains to discontinued paper processing procedures and revised text to explain that papers will be expunged from the official file by marking the papers "closed" and "non-public."

    —Subsection II title revised to read "Types of Papers Expunged With Approval of the Director of the USPTO or CRU/TC Director or SPRS." Revised text of subsection II to replace "returned" with "expunged" and to delete the penultimate sentence which referred to the return of papers. Clarified text in the last chart by adding "or if inadvertently entered, it will be expunged from the file."

    —In subsection IV, revised title to read "Papers Located in the Patent File." Deleted indication that citations by third parties are placed in the reexamination file because current processing places the citations in the patent file instead.

    2268

    —Added 35 U.S.C. 27, and updated 35 U.S.C. 41(a)(7) and 133; updated 37 CFR 1.137. Specifically, the statute and regulations were changed to only provide for revival under the unintentional standard and to provide for the extension of the 12-month period for filing a subsequent application.

    —In subsection I, rewrote text to state that a petition based on unavoidable delay is no longer available and to clarify that the amendments to 37 CFR 1.137 apply to any reexamination proceeding resulting from a supplemental examination proceeding filed before, on, or after December 18, 2013.

    —In subsection II, deleted former text and inserted text that explains the requirements for a petition to revive under the statute and regulations for consistency with the PLTIA and the PLT implementation rule. Also added an indication that questions had been raised concerning the Office's authority to revive an unintentionally abandoned application (without a showing of unavoidable delay) in certain situations, citing to Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech, 543 f.3D 657 (Fed. Cir. 2008) as an example.

    —In subsection III, changed the time period for submitting a reconsideration request from one month to two months, in accordance with the implementation of the PLT. Clarified that the extension of time provisions of 37 CFR 1.550(c) also apply to any reexamination proceeding ordered under 35 U.S.C. 257.

    2270

    —Added text to clarify that amendments submitted with a request filed under 35 U.S.C. 302, or after reexamination is ordered under 35 U.S.C. 304 or under 35 U.S.C. 257, and that are compliant with 37 CFR 1.530(d)-(j) are generally entered if submitted prior to a final action.

    2271

    —In subsection II, modified form paragraphs 22.09 and 22.10 to account for the no cause extension of time in 37 CFR 1.550(c)(3).

    2271.01

    —In subsection I, changed "manager will" to "manager may" to allow for some flexibility for managers.

    2272

    —In subsection I, changed the time period for submitting a response from one month to two months, in accordance with the implementation of the PLT. Clarified that the same time period also applies to any reexamination proceeding ordered under 35 U.S.C. 257. Added text that explains the no cause extension of time in patent owner requested and director ordered reexaminations newly provided for by 37 CFR 1.550(c) is in conformance with the minimum reply provisions of the PLT and thus additional "no cause" extensions are not available for a response to a final Office action.

    —In subsection II, added a reference to new form PTO-2311.

    2273

    —Deleted text discussing ex parte reexaminations filed before November 29, 1999 because such reexaminations are no longer pending. Deleted the word "current" before "version" in the sentences discussing 35 U.S.C. 134 as amended by Public Laws 106-113 and 107-273.

    —Changed the time period for extension given upon the timely filing of a first response to a final rejection from one month to two months, in accordance with the implementation of the PLT.

    —Added text to discuss new form PTO-2311, which provides notification of a defect in the notice of appeal filed in patent owner requested reexaminations (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexaminations and clarified that form PTOL-475 is used in third party requested reexaminations.

    —Clarified that form PTOL-468 "may" be used to provide notification that an appeal is dismissed because notification could also be provided as part of a Notice of Intent to Issue Ex Parte Reexamination Certificate.

    2274

    —In subsection III, modified text to explain that the no cause extension of time in patent owner requested and Director ordered reexaminations newly provided for by 37 CFR 1.550(c) is available for filing the appeal brief. Added a cross-reference to MPEP § 2265.

    —In subsection IV, clarified that form PTOL-468 "may" be used to provide notification that an appeal is dismissed because notification could also be provided as part of a Notice of Intent to Issue Ex Parte Reexamination Certificate.

    —Deleted the sentence that stated the determination should be completed within approximately one month from the filing of the appeal brief to give flexibility to the Board in managing their work load. Modified "an appeal conference" to "a conference" because reexamination proceedings are not required to have "appeal conferences" like patent applications.

    2275

    —In the first paragraph, inserted a sentence to explain that there is no requirement for a pre-appeal conference but there is a requirement for a panel review of an examiner's answer in reexamination proceedings.

    2279

    —Deleted text discussing ex parte reexaminations filed before November 29, 1999 because such reexaminations are no longer pending. Deleted the word "current" before "version" in the sentences discussing 35 U.S.C. 141 and 145 as amended by Public Laws 106-113 and 107-273.

    —Added a sentence to discuss that 35 U.S.C. 141(b) was further amended by Public Law 112-29.

    2280

    —Modified title to add "Filed under 35 U.S.C. 302" at the end. Revised to state that the material to patentability standard set forth in 37 CFR 1.56(b) is applicable to reexamination proceedings ordered as a result of supplemental examination under 35 U.S.C. 257 and added cross-references to MPEP § 2818.01 and chapter 2000.

    2281

    —Revised to incorporate by reference the procedures set forth in MPEP § 713.01 to provide guidelines for conducting interviews via electronic means.

    —Deleted the statement that the Office of Patent Legal Administration needs to authorize anything other than an in person interview at headquarters or a satellite office.

    —Revised to indicate that an interview initiated by the examiner to obtain an amendment to render the reexamined claims patentable might not have the panel members participating in the interview.

    —Modified to clarify that only publicly available information may be discussed by the examiner when a third party requests information. Added another example regarding claim interpretation and publicly available information.

    —Clarified that a copy of the interview summary form PTOL-474 should be mailed to the patent owner, if not already provided with a copy.

    2282

    —Revised text to clarify that notice of concurrent proceedings includes notification of any supplemental examination and any review before the Patent Trial and Appeal Board.

    —Amended form paragraph 22.07 to add the phrase "or reexamination ordered under 35 U.S.C. 257" at the end.

    2283

    —In subsection II, deleted as outdated policy the sentences regarding suspending the second proceeding where the first proceeding is on appeal before a federal court and requiring the express written approval of the CRU or TC Director for suspensions.

    —In subsection III, clarified the guidelines given in the second paragraph.

    —In subsection IV, modified text to remove reference to discontinued paper processing procedures.

    —In subsection VII, in the last sentence of the first paragraph, changed "returning" to "expunging" and deleted the clause "but no copy of the petition will be retained by the Office" because the prior sentences already cover the procedures. Added "or subsequent thereto" after "37 CFR 1.530" in the second paragraph.

    2285

    —Subsection II.A clarified by adding "(e.g., within three months from the request's filing date)" in the first sentence.

    —In subsection II.B, deleted as no longer applicable the paragraph regarding procedures to follow if the stay of a reexamination has been removed following a reissue application examination.

    —In subsection V, in the last sentence of the first paragraph, changed "returning" to "expunging" and deleted the clause "but no copy of the petition will be retained by the Office" because the prior sentences already cover the procedures.

    2286

    —In subsection I, deleted text that described time frames for when an examiner takes up a proceeding and when any action should be mailed in order to give supervisors more flexibility in assigning and monitoring work load. Also, deleted text that stated a one month time response is set because such policy is discontinued in light of the PLT implementation. Finally, deleted case law citations to In re Vamco Machine and Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985); Gould v. Control Laser Corp., 705 F.2d 1340, 217 USPQ 985 (Fed. Cir. 1983); Loffland Bros. Co. v. Mid-Western Energy Corp., 225 USPQ 886 (W.D. Okla. 1985); The Toro Co. v. L.R. Nelson Corp., 223 USPQ 636 (C.D. Ill. 1984); Digital Magnetic Systems, Inc. v. Ansley, 213 USPQ 290 (W.D. Okla. 1982); Raytek, Inc. v. Solfan Systems Inc., 211 USPQ 405 (N.D. Cal. 1981); and Dresser Industries, Inc. v. Ford Motor Co., 211 USPQ 1114 (N.D. Texas 1981) because none of the decisions related to the Office's policy regarding reexaminations.

    —In subsection V, deleted "by the STIC" at the end of the first paragraph because CRU staff performs most litigation searches.

    2286.01

    —Inserted "ex parte" prior to reexamination, two occurrences, because amended 35 U.S.C. 315(d) and 325(d) do not apply to inter partes reexamination.

    2287

    —Moved references to examiner's amendments from the introductory text to subsection V. Revised to amend procedural steps referring to discontinued paper processing to be applicable to current electronic processing throughout section.

    —In subsection I, revised the list of items to review in the reexamination and patent files by adding "such as the certificate number, e.g., 'C1' or 'C2'" following "thereon" in item (B), and by amending item (D) to indicate that the examiners should enter the current classification in the Issue Classification boxes, cross-referencing MPEP §§ 903.07 and 902.03(e).

    —In subsection III, example claim 2 under reexamination, "the sintered preform is machined into a lens" was changed to "a pressure of 300-400 psi is applied during the heating steps."

    —In subsection V, revised "a formal examiner's amendment" to read "an examiner's amendment" for consistency with the terminology in MPEP Chapter 1300. Added indication that any examiner's amendment to the title or abstract must be authorized by the patent owner.

    —In subsection VI, deleted the last paragraph because the same text appears more appropriately in MPEP § 2287.01.

    2287.01

    —Corrected the rule citation from 37 CFR 1.182 to 37 CFR 1.312 in the second sentence.

    2289

    —Deleted the second paragraph pertaining to a screening process performed by OPLA because such procedures have been discontinued.

    2290

    —Clarified text by making the sentence that discussed the ordinal sequence of inter partes reexamination certificates its own paragraph. Added a paragraph to discuss certificates issued from reexaminations ordered under 35 U.S.C. 257.

    —Deleted text that referred to "international and U.S. classification" and inserted "the current classification" in its place.

    —Modified "the list of prior art documents" to "the notice regarding the list of prior art documents" to more accurately reflect the current practice in which the list of documents is not printed on the certificate.

    —In the second item (A), added text to describe that the filing date and number of the request is preceded by "Supplemental Examination Request" if reexamination was ordered under 35 U.S.C. 257.

    —Updated the example certificates provided at the end of the section to reflect a certificate that does not list the prior art citations.

    2291

    —Modified the last paragraph to state that the Official Gazette notice will clearly indicate the type of certificate, e.g., ex parte reexamination certificate (for proceedings ordered under 35 U.S.C. 304), an inter partes reexamination certificate, or an ex parte reexamination certificate from reexamination ordered under 35 U.S.C. 257.

    2294

    —Deleted text that stated that the proceedings are forwarded to OPLA after a NIRC is processed or for reissue review because such procedures have been discontinued.

    2295

    —In the second paragraph, modified the second sentence to state that the CRU technical support staff will print out a copy of the reexamination certificate and make it of record in the second reexamination file as a preliminary amendment to more accurately reflect current processing procedures.

    —In subsection II, added a reference to new form PTO-2311 and changed the 1 month time period to "an appropriate" time period to reflect changes in response time due to implementation of the PLT.

    —In subsection III, changed "Upon conclusion of the reexamination proceeding" to "After mailing of the NIRC" to more clearly reflect current procedures.

    2296

    —Added new forms PTOL-471D and PTOL-471G that replaced form PTOL-471, updated the title for form PTOL-475, and added new forms PTO-2311and PTO-2293.

    [top]

      

    CHAPTER 2400:

    Passim

    —Updated references to 35 U.S.C. 112, first and second paragraphs, to 35 U.S.C. 112(a) and (b) to reflect changes made in the AIA.

    Passim

    —Revised the word "code" to read "symbol" in the context of the description of nucleotide bases and amino acids to improve clarity and for consistency with the tables in ST.25.

    Passim

    —Replaced the phrase "Sequence Listing" with the same words without quotation marks or initial capital letters (i.e., sequence listing).

    2401

    —Rewritten to delete historical background pertaining to the development of the deposit rules and sequence rules. This information can be accessed in MPEP § 2401 in the MPEP Ninth Edition (March 2014)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/old/index.htm).

    2402

    —Revised to insert 37 CFR 1.801(defining biological information) at the beginning of the section. Replaced citation to a district court case with a citation to Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 63 USPQ2d 1609 (Fed. Cir. 2002)(deposit may satisfy the written description requirement).

    —Deleted historical information pertaining to effective date of the deposit rules and added notation to see PCT Rule 13bis and MPEP § 1823.01 for the requirements under the PCT for a reference to a deposited biological material in an international application.

    2403

    —Revised to delete 37 CFR 1.801. Added caution to examiners against requiring that a specific biological material be deposited where a deposit of starting material would allow the skilled artisan to make and use the claimed invention; also added an example of such a situation.

    2403.02

    —Revised to indicate that the Office will consider 2500 to be an optimum number of seeds to deposit in the normal case, rather than the minimum number to deposit.

    2404.01

    —Revised the "Board of Patent Appeals and Interferences" to read "the Board."

    —Revised to account for acceptable non-Budapest treaty deposits. Added paragraph explaining that with regard to such deposits, in reply to a request made under 37 CFR 1.808(c), the Office will not certify that a deposit has been stated to have been made under conditions which make it available to the public as of the issue date unless the record otherwise clearly indicates that an acceptable non-Budapest Treaty deposit was made and that all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of the patent (with the possible exception of requiring the request for the deposit to be in the format specified in 37 CFR 1.808(b)).

    2405

    —Replaced list of International Depositary Authorities (IDAs) with a reference to the WIPO website where a list of current IDAs under the Budapest Treaty is maintained (www.wipo.int/treaties/ en/registration/budapest).

    2406

    —Replaced sentence indicating that the deposit rules are equally applicable in international and national stage applications filed under the PCT with the explanation that while 37 CFR 1.804 permits making a deposit after the filing date of an application, in many countries the deposit must be made before the filing date.

    2406.01

    —Deleted "the first paragraph of" before 35 U.S.C. 112.

    2406.03

    —Replaced the phrase "foreign to the United States" with "other than the United States" and replaced the phrase "is sufficient to comply with 35 U.S.C. 112" with "may be relied upon to comply with 35 U.S.C. 112."

    2407.01

    —Revised first paragraph to clarify that pursuant to 37 CFR 1.805(a), an applicant is required to notify the Office when it obtains information that a depository cannot furnish samples of a deposit referenced in a pending application, and that a replacement or supplemental deposit must be made if access to the deposited material is necessary to satisfy the requirements for patentability under 35 U.S.C. 112.

    2407.02

    —Revised to add a new first paragraph stating the requirement for a patent owner to notify the Office when it obtains information that a depository cannot furnish samples of a deposit referenced in a patent and the consequences of failing to so notify the Office and diligently replace a deposit.

    —Revised to explain that a replacement or supplemental deposit made in connection with a patent, whether or not made during the pendency of an application for reissue patent or a reexamination proceeding or both, will not be accepted unless a certificate of correction under 37 CFR 1.323 is requested which meets the terms of 37 CFR 1.805(b) and 37 CFR 1.805(c) for replacement or supplemental deposits. Also added cross-references to MPEP §§ 1411.01 and 2219.

    —Added text explaining that a request for a certificate of correction of a patent under 37 CFR 1.805(b) and 37 CFR 1.805(c) will not be granted where no original deposit was made before or during the pendency of the application which matured into the patent.

    2407.06

    —Revised to delete "Finally," from the first sentence.

    2408

    —Revised to add cross-reference to MPEP § 2701 for an explanation of the term of a patent. Revised the final sentence to clarify that a specific statement that the deposit would be stored under agreements that would make them available beyond the enforceable life of the patent for which the deposit was made is required only where the 30-year term of deposit would terminate within the enforceable life of the patent.

    2409

    —Revised to explain that there is a distinction between a statement by the applicant that the deposit has been made under the Budapest Treaty and one in which the deposit has been made and accepted under the Budapest Treaty. Where a statement is merely an indication that a deposit has been made (with no indication as to whether it has been accepted), there is no assurance that the requirements under 35 U.S.C. 112 have been satisfied.

    2410.01

    —In the final paragraph, revised to add "and accepted" after "a deposit had been made" to the discussion of the conditions prescribed by the Bupdapest Treaty.

    2410.02

    —Revised to indicate that persons requesting a certificate of statement of availability of deposit should contact the TC 1600 Director's office and should not submit the request via the examiner of record. Also revised to indicate that Form BP-12, which may be used for requests pertaining to deposits made pursuant to the Budapest Treaty, is available on the WIPO website.

    —Added paragraph explaining that the Office will not certify whether a deposit has been made under conditions which would make it available to the public until the issuance of a U.S. Patent referencing the deposit.

    2411

    —Updated 37 CFR 1.809(c).

    2411.01

    —Revised to clarify description of possible rejections under 35 U.S.C. 112(a) or (b) in the context of the deposit of biological materials, and added indication that a lack of written description can arise in the context of original claims.

    —Added a cross-reference to 37 CFR 1.802 which describes when a deposit of biological material is needed.

    —Deleted citation of two cases in which the Federal Circuit resolved best mode issues in the litigation context.

    2411.02

    —Revised to add a reference to a supplemental deposit.

    2411.03

    —Revised to indicate that where an application is otherwise in condition for allowance except for a required deposit, the Office may notify the applicant in a notice of allowability and set a three month time period within which the deposit must be made in order to avoid abandonment. This time period is not extendable under 37 CFR 1.136 (see 37 CFR 1.136(c)).

    2411.04

    —Removed and reserved. Information relevant to replacement or supplemental deposits after a patent has issued is set forth in MPEP § 2407.02.

    2420

    —Rewritten to delete historical background pertaining to the development of the sequence rules. This information can be accessed in MPEP § 2420 in the MPEP Ninth Edition (March 2014)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/old/index.htm).

    —Added cross-references to PCT Rule 5 and Rule 13ter, and MPEP § 1823.02 and § 2422, for the requirements under the PCT for international applications that disclose nucleic acid or amino acid sequences.

    2421.01

    —Section title and text therein rewritten to set forth the definition of "sequence listing" and "CRF." Deleted previous text, which set forth background information as to the applicability date of the sequence rules, in its entirety.

    —Added explanation that for purposes of the sequence rules and the discussion in MPEP Chapter 2400, the phrase "disclose(d) (or disclosure(s) of) nucleic acid or amino acid sequences" is intended to refer to those nucleic acid or amino acid sequences that are described in the patent application by enumeration of their residues and that meet the length thresholds of 37 CFR 1.821(a).

    —Added explanation that the "Sequence Listing" part of the disclosure required by 37 CFR 1.821(c) is the official copy of the sequence listing, and may be submitted as an ASCII text file via EFS-Web, on compact disc, as a PDF submitted via EFS-Web, or on paper. Also added cross-reference to MPEP § 2422.03 for additional information.

    —Added explanation that 37 CFR 1.821(e) requires that a copy of the sequence listing referred to in 37 CFR 1.821(c) must also be submitted in computer readable form (CRF) as an ASCII text file in accordance with the requirements of 37 CFR 1.824 (hereinafter "CRF of the sequence listing" or "CRF"). The computer readable form may be submitted on the electronic media permitted by 37 CFR 1.824 , or may be submitted as an ASCII text file via EFS-Web. Also added cross-reference to MPEP § 2422.04 for additional information.

    2421.02

    —Revised to clarify that the sequence rules define a set of symbols and procedures that are both mandatory and the only way that an applicant is permitted to describe information in the sequence listing.

    —Corrected description of the sequences that the sequence rules embrace (i.e., all unbranched nucleotide sequences with ten or more nucleotide bases and all unbranched, non-D amino acid sequences with four or more amino acids, provided that there are at least 10 "specifically defined" nucleotides or 4 "specifically defined" amino acids).

    2421.03

    —Revised description of initial treatment of noncompliant sequence listings in the Office of Patent Application Processing (OPAP) to reflect current procedures, i.e., OPAP will mail a Notice to Comply to applicant listing the requirements that have not been met and setting a two month time period within which to comply with the sequence rules, 37 CFR 1.821 - 1.825. Failure to comply with these requirements will result in abandonment of the application under 37 CFR 1.821(g). Extension of time may be obtained by filing a petition accompanied by the extension fee under the provisions of 37 CFR 1.136.

    —Added paragraph explaining that patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013, may be subject to reductions in patent terms adjustment pursuant to 37 CFR 1.704(c)(13) if they are not in condition for examination within eight months from the filing date or date of commencement, respectively. "In condition for examination" includes compliance with 37 CFR 1.821 - 1.825 (see 37 CFR 1.704(f)).

    —Revised to indicate that inquiries regarding a specific CRF that has been processed by the Office should be directed to the Sequence Systems Service Center.

    2421.04

    —Revised to delete references to general changes that may occur in the future. Added indication that the Office will continue work on the preparation of a new World Intellectual Property Organization (WIPO) standard on the presentation of nucleotide and amino acid sequence listings using eXtensible Markup Language (XML) with the members of the Task Force on Sequence Listings created by the Committee on WIPO Standards.

    2422

    —Revised to add subsection title "I. Incorporation by Reference of WIPO ST.25 (1998) in 37 CFR 1.821." Subsection I revised to indicate where a copy of the 1998 version of ST.25 is available online and to explain that ST.25 was updated in December 2009.

    —In subsection I, added explanation that modifications not listed in WIPO Standard ST.25 (1998) Appendix 2, Tables 2 and 4, may also be represented as the corresponding unmodified base or unmodified amino acid in the sequence itself, and the modification should be described using its full chemical name in the Feature section of the sequence listing.

    —Revised to add subsection title "II. Filing Internationally." Updated the considerations that applicants who wish to file internationally in countries which adhere to WIPO Standard ST.25 should take into account. In particular, references to the 1998 version of the standard have been revised to correspond to the language of the 2009 update to the standard, and the explanation regarding free text in numeric identifier <223> has been clarified.

    —Paragraph added to subsection II to explain that requirements related to the submission of sequence listings may also differ between filing in the United States and filing internationally. For example, where an international application is filed in paper, the sequence listing part of the international application must also be provided in paper, although the search copy must be filed in electronic form, e.g. on a CD or, in the RO/US, as an ASCII text file via EFS-Web. Also, any tables filed in an international application must be an integral part of the application, i.e., cannot be submitted as a separate file in text format.

    2422.01

    —Revised section title to read "Nucleotide and/or Amino Acid Disclosures Requiring a Sequence Listing" to more accurately reflect the content of the section.

    —Added subsection title "I. Length Thresholds," and revised the text therein to correctly indicate that sequences with fewer than ten specifically defined nucleotides are specifically excluded.

    —Added subsection title "II. Representation of Nucleic Acids and Amino Acids" and revised the text therein to delete the discussion pertaining to the limitation of the sequence rules to L-amino acids because D-amino acids are not precluded from representation in a sequence listing and the Office encourages voluntary compliance for D-amino acids.

    —Subsections III - V added to relocate information previously in MPEP § 2422.03.

    —Subsection III explains that in general, any sequence that is disclosed and/or claimed as a sequence, i.e., as a string of particular nucleotide bases or amino acids, and that otherwise meets the length thresholds of 37 CFR 1.821(a), must be set forth in the sequence listing.

    —Subsection IV explains that it is generally acceptable to present a single, primary sequence in the specification and sequence listing by enumeration of its residues in accordance with the sequence rules ("primary sequence") and to discuss and/or claim variants of that primary sequence without presenting each variant as a separate sequence in the sequence listing. However, the primary sequence should be annotated in the sequence listing to reflect such variants. Added sentence to strongly recommend that any sequences appearing in the claims, or sequences that are considered essential to understanding the invention, be included in the sequence listing as a separate sequence.

    —Subsection V explains the requirement for a sequence identifier for each sequence set forth in the sequence listing, and the use of sequence identifiers in the specification, claims, or drawings to reference sequences set forth in the sequence listing in accordance with 37 CFR 1.821(c) and (d).

    2422.02

    —Revised first paragraph to clarify that for all applications that disclose nucleic acid and/or amino acid sequences that fall within the definition set forth in 37 CFR 1.821(a), 37 CFR 1.821(b) requires exclusive conformance to the requirements of 37 CFR 1.821 through 37 CFR 1.825 with regard to the manner in which the disclosed nucleic acid and/or amino acid sequences are presented and described.

    —Revised second paragraph to clarify when it may be appropriate to depict a sequence in a drawing figure. Deleted references to relaxing the exclusive conformance requirement for drawing figures. Clarified that when a sequence is presented in a drawing, the sequence must still be included in the sequence listing if the sequence falls within the definition set forth in 37 CFR 1.821(a), and the sequence identifier ("SEQ ID NO:X") must be used, either in the drawing or in the Brief Description of the Drawings

    2422.03

    —Rewritten to set forth the manner in which a sequence listing required pursuant to 37 CFR 1.821(c) may be submitted. Subject matter previously in this section relocated to MPEP § 2422.01, subsections III - V.

    —Revised to explain that the sequence listing required pursuant to 37 CFR 1.821(c) may be submitted as an ASCII text file via EFS-Web, on compact disc, as a PDF submitted via EFS-Web, or on paper. Also revised to clarify that the sequence listing required by 37 CFR 1.821(c) is the official copy of the sequence listing, and that 37 CFR 1.821(e) requires that a copy of the sequence listing referred to in 37 CFR 1.821(c) must also be submitted in computer readable form (CRF) in accordance with the requirements of 37 CFR 1.824. Further revised to explain the basic requirements for identifying ASCII text files and incorporating such files by reference in the specification.

    2422.03(a)

    —New section added to explain that pursuant to the EFS-Web Legal Framework, applicants may submit a sequence listing under 37 CFR 1.821 as an ASCII text file via EFS-Web instead of on compact disc, and to provide detailed information pertaining to the submission of such sequence listings.

    —Added subsection I to explain the implications of filing an ASCII text file sequence listing via EFS-Web in a variety of situations (e.g., on the filing date with or without a paper or PDF copy of the sequence listing, or in reply to a requirement under 37 CFR 1.821(g) or (h)). Includes specific note that the USPTO prefers the submission of a sequence listing in an ASCII text file via EFS-Web on the application filing date, and that submission of the sequence listing in a PDF file on the application filing date is not recommended.

    —Added subsection II to explain that a sequence listing submitted as a text file via EFS-Web will be excluded when determining the application size fee, whereas a sequence listing submitted as a PDF file will not be excluded. Also discusses application size fee as it relates to tables.

    —Added subsection III to discuss the size limit for text files submitted via EFS-Web and explain how to file an application that includes a sequence listing that is over 100 megabytes.

    —Added subsection IV to discuss filing sequence listings in international applications (PCT) via EFS-Web.

    —Subsection IV.A explains the preference for submission of the sequence listing part of the description as an ASCII text file and not as a PDF file, and discusses the international filing fee implications.

    —Subsection IV.B sets forth the file size and quantity limits for filing international applications via EFS-Web, and explains how to file an application that includes a sequence listing that is over 100 megabytes.

    —Subsection IV.C explains that tables related to a sequence listing must be an integral part of the description of the international application (PCT), and that when applicant submits tables related to a sequence listing in an international application (PCT) via EFS-Web, the tables must be in a PDF file.

    2422.04

    —Revised to indicate that the computer readable form required by 37 CFR 1.821(e) may be submitted on the electronic media permitted by 37 CFR 1.824 or may be submitted as an ASCII text file via EFS-Web. Updated information pertaining to providing published sequence data to NCBI.

    —Revised to add explanation that if a new application is filed via EFS-Web with a compliant ASCII text file sequence listing, and applicant has not filed a sequence listing in a PDF file, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and CRF required by 37 CFR 1.821(e), eliminating any chance for discrepancies between the official copy and the CRF.

    2422.05

    —Section rewritten to clarify the procedure for requesting transfer of a computer readable form. Added text of 37 CFR 1.821(e) and explanation that the rule provides a mechanism to request the transfer of a CRF from an application already on file to a new application in limited circumstances. Added explanation of how applicant may be able to retrieve a copy of the sequence listing in ASCII text format in another application, and strong recommendation that applicant submit an ASCII text copy of a sequence listing in the new application rather than request a transfer to avoid possible application size fees and possible delays that may be introduced by defective transfer requests.

    —Deleted sample letter requesting transfer, and added indication that Form PTO/SB/93 should be used to request a transfer of a CRF under 37 CFR 1.821(e) to facilitate processing of the request.

    —Added subsection I to clearly set forth the requirements of a transfer request, and subsection II to describe a proper reply to a defective transfer request notice.

    2422.06

    —Revised to indicate that a statement under 37 CFR 1.821(f) that the content of the official and computer readable copies of a sequence listing are the same may be made by a registered practitioner, the applicant, an inventor, or the person who actually compares the sequence data on behalf of the aforementioned.

    —Added paragraph explaining when a statement under 37 CFR 1.821(f) is not required.

    2422.07

    —Revised to add explanation that when an amendment to comply with the requirements of 37 CFR 1.821(g) adds or amends a compact disc(s) or ASCII text file submitted via EFS-Web, applicant is required to update or insert in the specification an appropriate incorporation by reference statement.

    —Revised to indicate that the no new matter statement which must accompany submissions under 37 CFR 1.821(g) may be made by a registered practitioner, the applicant, an inventor, or the person who actually compares the sequence data on behalf of the aforementioned.

    —Added note that patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013, may be subject to reductions in patent terms adjustment pursuant to 37 CFR 1.704(c)(13) if they are not in condition for examination within eight months from the filing date or date of commencement, respectively. "In condition for examination" includes compliance with 37 CFR 1.821 through 1.825 (see 37 CFR 1.704(f)).

    —Revised to clarify the circumstances under which an applicant will be sent a notice requiring compliance with 37 CFR 1.821(b)-(f) in an international application.

    —In the final paragraph, deleted sentence regarding treatment of errors prior to the implementation date of the sequence rules.

    2422.09

    —Revised to delete indication that correspondence relating to the sequence rules may be hand-delivered to the Technology Center. Further revised to delete references to compact disc, floppy disk, tape, and magnetic media.

    2423.01

    —Revised to clarify language pertaining to the notation of modified bases or amino acids in a sequence listing. Also revised to clarify that applicants are encouraged to use the three-letter symbols for amino acids throughout the disclosure, instead of the one-letter symbols, for easier reading of the application and any patent issuing therefrom.

    2423.02

    —Revised to replace the final three sentences of the section with the simplified explanation that when the coding parts of a nucleotide sequence and their corresponding amino acids have been enumerated by their residues, those amino acids must also be set forth as a separate sequence if the amino acid sequence meets the length thresholds in 37 CFR 1.821(a).

    2423.03

    —Replaced the term "enumeration" with "numbering" for consistency with 37 CFR 1.822. Deleted background information regarding the basis for the numbering procedures.

    —Revised to rewrite the final paragraph of the section to clarify the procedures for presenting and numbering hybrid and gapped sequences.

    2424.01

    —Revised to generally explain that 37 CFR 1.823 sets forth the informational requirements for the sequence listing that must be submitted under 37 CFR 1.821(c) as part of the application.

    —Revised to specify that a CRF of a sequence listing submitted on compact disc cannot include table information, and that a sequence listing or CRF of a sequence listing is submitted as an ASCII text file via EFS-Web cannot contain information other than the sequence listing. Added cross-reference to MPEP § 608.05(b) for information regarding submission of large tables in ASCII text format via EFS-Web or on compact disc.

    2424.02

    —Replaced the table of numeric identifiers and accompanying information with a citation to 37 CFR 1.823(b) (reproduced in MPEP § 2424) which includes the same information.

    2424.03

    —Revised to explain proper citation of unpublished and published PCT applications, and to indicate that questions regarding the proper citation of patent documents should be directed to staff in the Office of International Patent Cooperation.

    —Revised to update the source of the controlled vocabulary that should be used in the numeric identifiers relating to features of a given sequence in the sequence listing.

    2425

    —Revised to indicate that if the sequence listing required by 37 CFR 1.821(c) cannot be submitted via EFS-Web because it is larger than 100 megabytes, and it is impractical to provide the sequence listing on compact discs or other electronic media as set forth in 37 CFR 1.824 due to the size of the sequence listing, an exception via a non-fee petition to waive this provision will be considered.

    2426

    —Revised to add information pertaining to amending a sequence listing or CRF thereof by submission of an ASCII text tile via EFS-Web.

    2427

    —Revised to delete "Notice to Comply" from the title, and to delete the associated text previously in MPEP § 2427.02 in its entirety. Information relevant to a Notice to Comply is set forth in MPEP § 2421.03.

    —Text previously set forth in the first two paragraphs of MPEP § 2427.01 with regard to certain minor errors pertaining to compliance with the sequence rules has been relocated to this section and further revised to describe some minor errors pertaining to compliance with the sequence rules that may be discovered after examination has begun. Form paragraphs 24.01 - 24.05.01 and the associated discussion thereof previously in MPEP § 2427.01 have been deleted in their entirety.

    2427.01 - 2427.02

    —Deleted. See the discussion of the changes to MPEP § 2427, above, for additional information.

    2429

    —Revised to add a significant number of helpful hints for compliance with the sequence rules, including information pertaining to filing sequence listings via EFS-Web, filing sequence listings in international applications, fees implications, consequences of failing to reply to compliance issues in a timely manner, the mandatory items of information that must be included in a sequence listing, information specific to several numeric identifiers, and contact information for assistance from the Sequence Systems Service Center.

    2430

    —Revised section title to "PatentIn Information." Revised to delete historical background pertaining to the development of, and updates to, PatentIn, and to describe PatentIn version 3.5.1 (November 2010). Added information regarding help related to downloading or using PatentIn, and deleted references to hands-on training. Also added a discussion of the Checker software that may be used to check a sequence listing for compliance with the requirements of 37 CFR 1.824, and a suggestion to consult the User Notes on the Checker website for an explanation of errors that are not indicated, and content that is not verified, by the Checker software.

    2434

    —Revised to indicate that in 2007, the Office rescinded the 1996 partial waiver of the requirements of 37 CFR 1.141 et seq. with regard to restriction requirements in certain applications claiming polynucleotide molecules. Added that for national applications filed under 35 U.S.C. 111(a), polynucleotide inventions will be considered for restriction, rejoinder, and examination practice in accordance with the standards set forth in MPEP Chapter 800.

    2435

    —Revised to explain that copies of patents and patent application publications that include sequence listings are available for sale through the Office of Public Records, Certification Division, on paper, on a CDROM, or in PDF format via the Internet. However, these copies will not include a sequence listing if the sequence listing is not included in the composed electronic image (page image) version of the patent or patent application publication. Applicants and members of the general public can obtain an electronic copy of a sequence listing through the Certification Division for a separate fee as set forth in 37 CFR 1.19(b)(3).

    [top]

      

    CHAPTER 2500:

    2501

    —Revised to update 35 U.S.C. 41(b). Deleted note about the administration of 35 U.S.C. 41(b) during 2005-2008. Further revised to remove discussion of Public Law 96-517 and subsequent Public Laws modifying the statutory provisions regarding maintenance fees.

    —Revised subsection I to refer to "entity status" rather than "small entity status" and removed indication regarding expired patents. Revised subsection II to remove reference to withdrawals of attorneys and agents.

    2504

    —Revised to remove reference to 35 U.S.C. 41 and multiple reissues.

    2510

    —Revised to add reference to USPTO website page for payment options and mailing addresses.

    —Revised subsection I to add reference to USPTO website for the Office of Finance Online Shopping Page in place of outdated steps to find the maintenance fee status information from the USPTO homepage.

    2515

    —Revised to update 37 CFR 1.366. Also revised to refer to changes in "entity status" rather than "small entity status."

    2520

    —Revised to include reference to fees for micro entities and to add a reference to current USPTO website page for USPTO Fee Schedule.

    —Deleted text that stated the maintenance fee amount is set by statute.

    2530

    —Revised to replace reference to "37 CFR 1.378(c)" with "37 CFR 1.378(a)-(c)."

    2531

    —Revised to state that if a discounted fee (small or micro) is received without the entitlement to an entity status being established, the Office will mail an Underpayment Notice or Non-Acceptance Notice to the fee submitter.

    2540

    —Revised to remove references to unavoidable delay as the basis for petitions to accept late payment of a maintenance fee.

    2542

    —Revised to include reference to both pre-AIA 37 CFR 1.33(a) and current 37 CFR 1.33(a).

    2550

    —Section retitled "Entity Status Discounts" and rewritten to provide more detailed information pertaining to maintenance fee payments and entity status. Added subsections I-III. New subsection I concerns claiming entitlement to small entity status and micro entity status. New subsection II concerns removal of either small entity status or micro entity status. New subsection III concerns payments which do not match the entity status of record.

    2560

    —Revised to add indication that post issuance revocation and withdrawal of attorney requests are not regularly processed.

    —Deleted text regarding outdated paper processing steps by the Office of Patent Application Processing.

    2570

    —Revised to include reference to USPTO website page for determining status of maintenance fee payments in place of outdated steps to find the maintenance fee status information from the USPTO homepage.

    2575

    —Revised subsection IV to reflect that a receipt of payment for a maintenance fee will only be made upon request.

    2580

    —Revised to indicate that pre-AIA 37 CFR 3.73(b) applies to pre-AIA applications and 37 CFR 3.73(c) applies to AIA applications. Added cross-reference to MPEP § 325.

    2590

    —Revised to update 37 CFR 1.378.

    —Revised to indicate that a separate petition fee and a separate statement of unintentional delay are required for each delayed maintenance fee payment, to specify the signing requirements for pre-AIA and AIA applications, to remove the reference to 37 CFR 1.378(c), to replace the reference to 37 CFR 1.378(e) with 37 CFR 1.378(d), and to remove reference to a petition fee for reconsideration of a decision.

    —Subsection I concerning the unavoidable delay basis for petitions to accept late payment of a maintenance fee was deleted.

    —Renumbered subsection II as subsection I. Revised subsection to replace 37 CFR 1.138(c) with 37 CFR 1.138(b) and 37 CFR 1.20(i)(2) with 37 CFR 1.17(m). Revised to provide information as to whether the EFS-web version of Form PTO/SB/66 or the non-EFS-web version of this form should be used in certain situations.

    2595

    —Revised to update title of Form PTO/SB/66 and to include updated versions of relevant forms.

    —Revised to replace 37 CFR 1.138(c) with 37 CFR 1.138(b).

    [top]

      

    CHAPTER 2600:

    2601

    —Deleted the word "original" modifying "requests" in the fourth and ninth paragraphs as the modifier is not necessary.

    2601.01

    —Clarified that the first flowchart shows a reexamination filed prior to September 16, 2012, which would be subject to the SNQ standard.

    —Added a sentence after the description of the first flow chart explaining that except for the standard for instituting reexamination, the same procedure pertains for an inter partes reexamination filed from September 16, 2011 through September 15, 2012.

    2602

    —Moved the text specifying that the AIA amendment to 35 U.S.C. 301(a)(2) is not applicable to an ongoing inter partes reexamination no matter when the prior art citation was filed from item (B) to the end of the section.

    —In item (C), deleted "in the Central Reexamination Unit or Technology Center (in which the reexamination proceeding is being examined)" after "stored" because it reflected an outdated procedure.

    2609

    —Added ", prior to September 16, 2012," after "requester" in paragraph (A) as a reminder that inter partes reexamination was discontinued.

    2622

    —Updated 37 CFR 1.33(c).

    —Added forms PTO/AIA/81B and PTO/SB/81C and deleted outdated form PTO/SB/81.

    2623

    —Updated form PTO/SB/83.

    2625

    —Deleted the reference to 37 CFR 1.915 in two places in the first paragraph after the rules because requests for inter partes reexamination can no longer be filed.

    2627

    —Entire text deleted and replaced by the following notice: "No requests for inter partes Reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."

    2630

    —Entire text deleted and replaced by the following notice: "No requests for inter partes Reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."

    2631

    —Entire text deleted and replaced by the following notice: "No requests for inter partes Reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."

    2632

    —Deleted outdated instructions pertaining to accessing Public PAIR.

    2632.01

    —Deleted outdated instructions pertaining to accessing a reexamination file via Public PAIR.

    2634

    —Clarified that micro entity reductions are only available for patent owners and not third party requesters.

    2635

    —Deleted an outdated intranet address for PALM, the phrase that stated the status codes for applications ranging from "020" to over "100," and instructions pertaining to discontinued paper processing.

    —Clarified that the stated reports from PALM are examples.

    2636

    —Revised to state that reexamination requests "are" assigned to the CRU. Clarified that in the rare situation where a reexamination has been assigned to an assistant examiner, a primary examiner must sign all actions, conference all actions with a SPRS or TC Quality Assurance Specialist (QAS) and another examiner, and take responsibility for all actions taken.

    —In the "Copending reissue and reexamination proceeding" subsection, text is revised to eliminate reference to the "TC" because reissue applications are assigned to examiners in the TC as well as the CRU.

    2640

    —Revised text to indicate that the CRU support staff or STIC will perform a litigation search report prior to action by the examiner. Modified text to indicate that litigation information must be brought to the attention of a CRU SPRS.

    —Added a sentence to clarify that "… the second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer, or by any reexamination certificate that has issued as of the time of the determination."

    2641

    —Entire text deleted and replaced by the following notice: "No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."

    2642

    —Revised text to clarify what Office proceedings are considered by the examiner in determining whether the same question of patentability has already been raised and to define "earlier concluded or pending examination or review" to include review of the patent in a trial by the Patent Trial and Appeal Board and other contested proceedings in addition to prior examinations.

    —Changed form paragraph 22.01.01 to specify "in an earlier concluded examination or review of the patent being reexamined, or has been raised to or by the Office in a pending reexamination or supplemental examination of the patent."

    2643

    —Deleted the last sentence of the section because it does not reflect current policies.

    2646

    —In subsection I, in the last paragraph, two occurrences, changed form PTOL- "501" to "2070" to reflect current practice.

    —In subsection II, in the first paragraph, clarified that there is no right to petition "as an 'ultra-vires' action by the Office" a finding of a SNQ or RLP based on reasons other than those advanced by the requester.

    —In subsection II, in third to last paragraph, deleted "the extremely rare" and inserted "a" in its place.

    —In subsection II, in second to last paragraph, changed policy of filing the opposition "by facsimile transmission" to "electronically."

    —In subsection III, revised text regarding prior art citations submitted after the order for reexamination to delete the indication that they be stored as a separate file in a physical location (because this does not account for electronic processing). Added a sentence to note that written statements under 37 CFR 1.501 are not permitted in inter partes reexaminations.

    2647

    —In the last paragraph, two occurrences, changed form PTOL-"501" to "2070" to reflect current practice.

    2647.02

    —In the second paragraph, two occurrences, changed form PTOL-"501" to "2070" to reflect current practice.

    2648

    —Changed text that stated reassignment to another examiner is the general rule to limit the general rule to the situation in which the examiner's determination failed to find any SNQ or RLP in order to distinguish procedures from situations in which the examiner's determination is only a partial denial of some SNQs or RLPs. In last paragraph, two occurrences, added "or RLP(s)" after "SNQ(s)" to clarify that a petition may be filed when the reexamination is subject to the RLP standard.

    2654

    —Clarified the text of the Editor Note for 35 U.S.C. 314.

    2655

    —In the second paragraph, added the phrase "of all the claims requested to be reexamined" after "a refusal to order reexamination" in the first sentence in order to distinguish procedures from situations in which the examiner's determination is only a partial denial of some SNQs or RLPs.

    2656

    —Changed "items of information" or "information" to "document(s)" in several locations because "items of information" is now a phrase associated with supplemental examination.

    —Revised text regarding the submission of prior art after a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) was mailed to reflect the Office's more recent publication procedures, i.e., the proceeding generally begins the publication (issue) cycle immediately after NIRC. To obtain entry, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, (B) an unequivocal statement that one or more claims are unpatentable, and (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. These requirements are similar to the requirements to withdraw an application from issue under 37 CFR 1.313(c)(1) and help the Office comply with the statutory mandate of "special dispatch" for reexaminations.

    2657

    —Revised to indicate a notice will be present on the certificate indicating that the list of cited prior art documents will be available via PAIR. Text was deleted regarding the discontinued practice of listing the references on the reexamination certificate.

    2658

    —Added "ordered under 35 U.S.C. 304" after "ex parte reexamination" in the last sentence before subsection I to distinguish from reexaminations ordered from a supplemental examination request.

    —In subsection I, in the first sentence, added "inter partes" before "reexamination" and added "under the first-to-invent prior art regime" after "publications" to clarify that all inter partes reexaminations are subject to this prior art regime.

    —In subsection II, added "ordered under 35 U.S.C. 304" after "ex parte reexamination" to distinguish from reexaminations ordered from a supplemental examination request.

    —In subsection IV.E, existing text was deleted and replaced by a reference to MPEP § 2258.02, which sets forth the applicable policies as to claiming foreign priority or domestic benefit in light of changes made by the PLTIA.

    —In subsection IV.H, added "pre-AIA" before "35 U.S.C. 102(c)" to clarify which provision applies and deleted text that suggested the filing of a reissue application to address questions outside the scope of reexamination. Similar text also deleted in form paragraph 26.03.

    2659

    —Deleted the last two sentences, inserted two new sentences regarding the application of claim preclusion (res judicata) to the Office in reexamination proceedings, and added references to In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007) and In re Construction Equipment Company, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011).

    2660

    —In subsection I, in the first paragraph, deleted text that discusses a ten-week deadline.

    —In subsection V, updated the text of the sample Office action to reflect current text in form paragraphs 7.20.fti, 7.21.fti, and 26.03.

    2660.03

    —Clarified the first sentence by adding "undergoing reexamination" after "any claim."

    2661

    —Added an Editor Note to state the limited applicability of 35 U.S.C. 314(c) as reproduced.

    2662

    —In item (B), added "except as provided in MPEP §§ 2666.40 and 2666.60" to clarify when a third party requester may file comments on a patent owner's supplemental response.

    —In item (F)(1), added a reference to MPEP § 2674 et seq.

    —In item (L), deleted text referring to reexamination resulting from a court order, litigation concurrent with an inter partes reexamination proceeding, and reexamination proceedings pending for more than one year.

    2664

    —Revised the second paragraph to clarify the Office's current policy on correspondence address used for the mailing of Office actions and to delete reference to the PALM printer because such printers are no longer used.

    —Deleted the reference to PTOL-2070 in the second and fourth paragraphs.

    —In the third paragraph, added a sentence to describe the mailing procedures when there is more than one third party requester for a request and if any requester failed to designate a mailing address of a registered practitioner as the correspondence address.

    —In the fourth paragraph, deleted "each additional partial patent owner as discussed above."

    2665

    —Added that CRU SPRS can also decide whether a request for an extension of time will be granted. Changed reference to the automatic extension of time in ex parte reexamination to be "two" months instead of one month to be consistent with changes due to implementation of the PLT. See MPEP § 2265.

    2666

    —In subsection I, after the reference to 37 CFR 1.111, added "other than the provision in 37 CFR 1.111(a)(1) to 'see …. [37 CFR] 1.136 for time for reply to avoid abandonment" to clarify that the extension of time provisions of 37 CFR 1.136 are not applicable to inter partes reexamination.

    —In subsection III, added "(i.e., closed)" after "sealed" in the first paragraph and changed the last paragraph to state that patent owners cannot submit an application data sheet (ADS) except as provided in MPEP § 2258.02 because an ADS is required in certain situations in order to claim foreign priority or domestic benefit as modified by the PLT implementation rule.

    2666.01

    —Added a reference to MPEP § 2667 at the end of the first paragraph after 37 CFR 1.530.

    2666.05

    —In subsection I, in the fourth paragraph, added text to advise that a requester should file comments in the 30 day time period even if patent owner's response is filed with a petition under 37 CFR 1.183 requesting waiver of the page length requirement of 37 CFR 1.943(b).

    —In subsection II, seventh paragraph, added a clause to clarify that a requester is provided with a time period to supply corrected comments if the comments were in response to a non-final Office action.

    2666.20

    —Modified text in the second paragraph to clarify when a requester can file comments based on a patent owner's supplemental response.

    —Added a cross-reference to MPEP § 2682 after the sentence discussing 37 CFR 41.77(c) and (e) in the third paragraph.

    2666.30

    —Revised text under "Discussion of Option (B)" to state that the requester may file comments within 30 days of the date of service of patent owner's corrected or supplemental response.

    2666.40

    —Clarified text in regard to when a requester can and cannot file comments if patent owner files a corrected response in response to a defect in their original response.

    2666.50

    —Revised penultimate paragraph to provide an exception to the one month or thirty day time period as provided in MPEP §§ 2666.05 and 2667.

    —Updated final paragraph to reflect current procedures wherein the technical support staff of the CRU reviews papers filed by the patent owner and requester.

    2666.60

    —Revised the first paragraph to provide an exception to the one month or thirty day time period as provided in MPEP §§ 2666.05 and 2667.

    —Clarified text in the second and third paragraph about when a requester may file comments in response to a patent owner correcting an informal response.

    2667

    —Modified text regarding the procedures of the return of inappropriate papers to eliminate procedures for discontinued paper processing and to state that inappropriate papers are expunged by marking the papers "closed" and "non-public."

    —Revised the title for subsection I to read "Types of Papers Expunged with Approval of the Central Reexamination Unit Director or SPRS."

    —Throughout subsection I, replaced "returned" with "expunged."

    —In subsections I.A.2 and I.B.2, after "37 CFR 1.957(d)," added the clause "if the submission is made prior to the mailing of an ACP" to clarify that the stated procedures to file a corrected submission do not apply to submissions after an ACP.

    —In subsections I.A.1, I.A.3, and I.B.1, replaced "RLA" with "SPRS."

    —In subsection I.B.3, in the third paragraph, clarified text about when a requester may file comments in response to a patent owner correcting an informal response by adding the phrase "unless patent owner's submission correcting the defect is directed to form and does not go to the merits of the case (e.g. payment of a fee other than an excess claims fee)."

    —In subsection I.C, removed text that inappropriate papers are returned "to an identified third party or destroyed if the third party submitter is unidentified" and reference to a storage area to cover procedures for electronic as well as paper processing.

    —In subsection III, revised the title to "Papers Located in the Patent File," removed all reference to the "storage area" to cover procedures for electronic as well as paper processing, added a reference to 37 CFR 1.902 and deleted the last sentence because proper timely prior art submissions are placed in the patent file and not the reexamination file.

    2668

    —Added 35 U.S.C. 27, updated 35 U.S.C. 41(a)(7) and 133, and updated 37 CFR 1.137. Specifically, the statute and regulations were changed to only provide for revival under the unintentional standard and to provide for the extension of the 12-month period for filing a subsequent application.

    —Modified the text to make it clear that a petition based on unavoidable delay is no longer available and to discuss the requirements under revised 37 CFR 1.137(a) for a petition to revive. Also added an indication that questions had been raised concerning the Office's authority to revive an unintentionally abandoned application (without a showing of unavoidable delay) in certain situations, citing to Aristocrat Techs. Australia Pty Ltd. V Int'l Game Tech, 543 f.3D 657 (Fed. Cir. 2008) as an example.

    —In the first paragraph, clarified that only claims undergoing reexamination and under a rejection may be cancelled if the patent owner fails to file a timely and appropriate response to an Office action.

    2670

    —Changed "clerical staff" to "technical support staff" for consistency with current position titles and modified text (e.g., making copies) that referred to discontinued paper processing.

    2671

    —In subsection II, revised text to eliminate discontinued processing steps of consultation with a RLA in OPLA and modified text that referenced discontinued paper processing.

    2671.01

    —In subsection V, modified the text in form paragraph 26.03 to eliminate the suggestion to file a reissue for issues raised that exceed the scope of reexamination.

    —In subsection X, deleted "as the action that does not close prosecution."

    2671.02

    —In the second paragraph, the end of the first sentence was changed to "issues should be clearly developed."

    —In subsection I, last paragraph, "single" was deleted before "previous" in the first sentence.

    —In subsection IV, modified the text in form paragraph 26.03 to eliminate the suggestion to file a reissue for issues raised that exceed the scope of reexamination.

    —In subsection VIII, revised text by deleting the step of hand carrying actions to the support staff to eliminate processing steps that are drawn towards discontinued paper processing.

    2671.03

    —In subsection I, changed "manager will" to "manager may" to reflect current procedures that the manager may let the examiner select the third member.

    2672

    —In subsection III, second to last sentence, "the ACP and" was added after "comments responding to" and in the last sentence "replacement" was changed to "corrected."

    —In subsection IV, deleted ", and/or the issues raised in the ACP" in the third sentence because the ACP is not "served" on the requester. In subsection V, two instances, "and/or" was changed to "or."

    2673

    —In subsection III, added a new penultimate paragraph that states affidavits or declarations are treated the same as amendments. This text was copied from MPEP § 2265.

    2674

    —Added a new third paragraph stating "Note that a requester is not entitled to file an appeal or cross appeal for proposed rejections which were determined to not raise a substantial new question of patentability or a reasonable likelihood of prevailing. Such a decision is final and nonappealable. See 35 U.S.C. 312(c) and 37 CFR 1.927."

    —Added text reading "The respondent's brief may include any arguments previously made of record that support the examiner's finding with respect to any claim addressed in the opposing party's appellant brief. See MPEP § 2675.01."

    —Changed "corrected" brief or briefs to "amended" brief or briefs to make terminology consistent in all appeal sections.

    2675

    —In item (B) following the reproductions of the rules, added "Note that a party is not always entitled to file an appeal or cross appeal. See MPEP §§ 2674 and 2674.01."

    —Revised to delete text indicating that the examiner reviews the appellant brief for compliance because the Board currently reviews the brief for compliance.

    —Inserted text copied from MPEP § 2677 which states that examiners are not required to make any determination if fewer than all of the rejected claims are identified as being appealed and will treat all pending claims in the proceeding as being on appeal.

    2675.01

    —Revised first paragraph to add indication that "[i]f an appellant brief was not properly filed and a notice of non-compliance is mailed to the appellant, the party opposing the appellant may file a respondent brief within one month from the date of service of the amended appellant's brief filed in response to the non-compliance notice." Also added explanation that "[t]he respondent's brief may include any arguments previously made of record that support the examiner's finding with respect to any claim addressed in the opposing party's appellant brief." Added citation to Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 109 USPQ2d 1599 (Fed. Cir. 2014) as support for the text.

    —Revised to delete text indicating that the examiner reviews the respondent brief for compliance because the Board currently reviews the brief for compliance.

    2676

    —Deleted the indication that an "examiner will have two weeks following the appeal conference to prepare the examiner's answer" to allow the examiner's manager flexibility in assigning work tasks.

    2677

    —Changed "clerical staff" to "technical support staff" and "Reexamination Legal Advisor (RLA)" to "CRU SPRS" for consistency with current position titles and practice.

    —Modified text (e.g., making copies) that referred to discontinued paper processing. In the penultimate paragraph, deleted the phrase "no later than two weeks from the date of the appeal conference (unless otherwise authorized by the CRU director)" to allow the examiner's manager flexibility in assigning work tasks.

    2681

    —Revised to replace "Board of Patent Appeals and Interferences" with "Board."

    —Deleted paragraph discussing suspension of action because it reflects discontinued practice.

    —In subsection I, clarified the text to state that the Board has "discretionary" authority to issue a new ground of rejection and to explain when the Board may use that authority.

    —Subsection II revised to limit the title and text to discussing that a Board decision containing a new ground of rejection is a non-final decision.

    —In subsection III, clarified that the rules do not provide for the Board to include in its decision a statement that a claim may be allowable in amended form.

    —In subsection IV, modified text to clarify that petitions on a Board decision are very limited (e.g., to procedural matters) and that disagreements with the merits of a Board decision cannot be petitioned.

    —In subsection V, revised text to simply state that Board decisions are published at the discretion of the Office.

    2682

    —Modified to remove language that described discontinued paper processing steps and to include language that describes current electronic processing steps. For example, deleted the second paragraph after the rule reproductions because it reflected outdated paper processing steps.

    —In subsection I, amended the title and text to clarify that the subsection discusses a Board decision in which there are no new grounds of rejection. Added text to define a final Board decision and to clarify the procedures if no further action is taken by any party after a Board decision.

    —In subsection I.A, clarified text as to the procedures followed when no action is taken by any party to the appeal.

    —In subsection I.B, revised text to clearly state when a request for rehearing must be filed and what happens if a request for rehearing is not timely filed.

    —In subsection II, modified text to provide more detailed guidance on procedures regarding practice under 37 CFR 41.77 when a new ground of rejection is made in a Board decision. For example, added text to clearly state that the patent owner must either request rehearing or reopening of prosecution or the appeal may be terminated. Also, added a paragraph that states when jurisdiction remains with the Board and a paragraph to discuss procedures when there is a new ground of rejection in addition to rejections or findings of patentability that are affirmed.

    —Revised the title of subsection II.A to clarify that it is drawn to a proceeding under 37 CFR 41.77(b)(2).

    —In subsection II.B, modified the title and the text to clarify that the subsection is drawn to when the patent owner requests that prosecution be reopened under 37 CFR 41.77(b)(1). Specifically, added and reorganized text to be in subsections that address paragraphs (b)(1), (c), (d), and (e) of 37 CFR 41.77. Text in subsections II.B.2 through II.B.4 is new.

    —Added new subsection II.C, to clarify procedures when no submission is made under 37 CFR 41.77(b)(1) or (2).

    —Deleted former subsection III as the material is now covered in subsection II.

    —Former subsection IV renumbered as subsection III. In subsection III.A, clarified procedures about when CRU director approval is needed to reopen prosecution after a Board decision.

    2683

    —Deleted 37 CFR 90.2 and 90.3; added former 37 CFR 1.302 and 1.304 as these provisions are still effective for appeals in inter partes reexaminations and are referenced in this MPEP section.

    —In subsection I.A, added a citation toConsumer Watchdog v. Wisconsin Alumni Research Foundation, 111 USPQ2d 1241, 753 F.3d 1258 (Fed. Cir. 2014) with an explanation that court dismissed a third party's appeal because it lacked Article III standing.

    2685

    —Revised first paragraph such that the interviews prohibited by 37 CFR 1.955 are not limited to telephonic interviews.

    2686

    —Clarified language regarding "any prior or concurrent proceedings" by deleting the examples given in the first sentence and adding a new third sentence to state that prior or concurrent proceedings include supplemental examination and reviews before the PTAB in addition to the examples provided in 37 CFR 1.985(a).

    2686.01

    —In subsection II, deleted the third sentence pertaining to the example of suspending the second proceeding when the first proceeding is awaiting appeal before a Federal court.

    —In subsection III, clarified that it is the third party in an "inter partes" proceeding that will have an opportunity to comment and deleted "hand-carried" and inserted "forwarded" to remove reference to discontinued paper processing.

    —Subsection III.A modified to remove language that described discontinued paper processing steps and to include language that describes current electronic processing steps.

    —In subsection VI, in the last sentence of the first paragraph, changed "returning" to "expunging" and deleted the clause "but no copy of the petition will be retained by the Office."

    2686.02

    —In subsection IV, inserted ", or it will be expunged, if the petition has been scanned into the Office's IFW system prior to its discovery" at the end of the first sentence. The second sentence was amended to read "[t]he decision returning or expunging such a premature petition will be made of record in the reexamination file."

    2686.03

    —In subsection I, in the first sentence of the second paragraph, deleted "the reissue application reaches the Technology Center (TC), that" to reflect that current procedures that reissue applications are also handled by the CRU. Similar phrase deleted in the first two paragraphs of subsection II.C.

    —In subsection III, revised text in first paragraph to eliminate reference to a RLA because that practice is discontinued.

    —In subsection IV, modified to remove language under (A) that described discontinued paper processing steps and to include language that describes current electronic processing steps.

    —In subsection V, first paragraph, inserted "(or it will be expunged, if the petition has been scanned into the Office's IFW system prior to its discovery)" after "CRU" in the first sentence. The last sentence was amended to read "[t]he decision returning or expunging such a premature petition will be made of record in both the reexamination file and the reissue application file."

    —Subsection VII revised to remove reference to specific interview types.

    2686.04

    —In subsection I, deleted case law citation regarding the response times set in reexaminations when litigation is pending and revised text to simply state that all aspects of the reexamination proceeding will be expedited to the extent possible and deleted text that stated the request will be taken up by the examiner for decision in 6 weeks after the request is filed.

    —In subsection II, in the first paragraph of item (B), inserted "pre-AIA" before "35 U.S.C. 317(b)," deleted the parenthetical "(as to those asserted by the patent owner, and/or challenged by the third party requester, and resolved in favor of the patent owner in the civil action)" and added a reference to subsection V of this section. In item (B)(3), deleted the sentence "[i]f the answer to each of questions (1)-(3) is 'yes'. . .," revised the sentences beginning "[i]f the examiner subsequently . . . subsection V. below" to reflect current practice, and inserted "or reasonable likelihood of prevailing" after "patentability" in the last sentence.

    —In subsection III, deleted the last sentence of the third to last paragraph because that practice is discontinued.

    —In subsection IV, third paragraph, revised text to reflect current practice. In the fourth paragraph, clarified text by adding "(and) if the Office is notified of the final court decision" and deleting "and the reexamination prosecution will be terminated." In the fifth sentence, "or reasonable likelihood of prevailing" was added after "patentability." In the penultimate paragraph, revised text to reflect current practice by replacing the language after "validity holding" in the first sentence with ", if a grantable petition under 37 CFR 1.182 to terminate reexamination of those claims is filed in accordance with the guidelines set forth in subsection V" and by deleting "the order to reexamine is vacated by the CRU Director if the decision was rendered prior to the order. If the decision was rendered subsequent to the order,".

    —In subsection V, added subsections A, B, and C to reflect current practice.

    —In subsection VI, deleted reference to the Scientific and Technical Information Center (STIC) because most litigation search reports are performed by the technical support staff in the CRU.

    2686.05

    —Deleted the phrase ", including providing for stay, transfer, consolidation or termination of such matter or proceeding."

    2687

    —In subsection II.B, modified text that "[t]he CRU SPRS/TC QAS will convene a panel review conference" to "[a] panel review conference will be convened" to reflect current practice that the examiner may convene a conference with the approval of the CRU SPRS or TC QAS.

    —Subsection III revised to remove reference to specific interview types.

    —In subsection V, deleted the phrase "via the appropriate Office" in the last sentence.

    —Subsection VI revised to reflect current electronic processing practice.

    —In subsection VII, added the phrase "that requires a response" after "an Office action" in the first sentence to clarify this situation from a failure to respond to an Office action that does not require a response, such as an Action Closing Prosecution.

    2687.01

    —Revised to remove reference to specific interview types.

    2688

    —In item (F), inserted "(e.g., by checking Box 9 'Other' on form PTOL-2068 and describing the status and Box 16 'Other' on the examiner's checklist form PTO-1516)" to clarify how examiners can indicate this status when preparing the NIRC.

    2690

    —In the seventh paragraph, changed "international and U.S. classification" to "current classification" to reflect changes to the CPC system and changed "list of prior art documents" to "notice regarding the list of prior art documents" to more accurately reflect the current practice in which the list of documents is not printed on the certificate.

    2694

    —In the last sentence, deleted "forwarded to the Office of Patent Legal Administration in accordance with MPEP" to reflect current practice.

    [top]

      

    CHAPTER 2700:

    2701

    —Added text to briefly explain that effective May 13, 2015, international design applications may be filed under the terms of the implementation of the Hague Agreement as to the U.S. and clarified that the term "design patents" includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385.

    —In subsection V, added citation to Bayer AG and Bayer Corporation v. Carlsbad Technology Inc., 298 F.3d 1377, 64 USPQ2d 1045 (Fed. Cir. 2002) to support the existing statement that a certificate of correction may be used to correct the date a patent is expiring due to the 1995 change in 35 U.S.C. 154(c), which provides a term of 17 years from grant or 20 years from filing, whichever is greater. Also added a citation to Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317, 82 USPQ2d 1203 (Fed. Cir. 2007) to support the existing statement that patents subject to a terminal disclaimer may receive term extension under 35 U.S.C. 156.

    2710

    —Clarified that the term "design patents" includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385.

    2730

    —Added Editor Notes to explain the limited applicability of some paragraphs of the rules reproduced herein.

    —Modified to include text that summarizes 37 CFR 1.702(d), 1.703, 1.704, and 1.705, as set forth in the final rule Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term,65 FR 56366 (September 18, 2000)(PTA implementation rule).

    —Added text that defines "original application" as set forth in the PTA implementation rule and supporting citation to Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 87 USPQ2d 1705 (Fed. Cir. 2008). Revised text to explain that the term "design patents" includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385.

    —Updated 37 CFR 1.704 to include changes effective December 18, 2013 and added text to describe the December 18, 2013 amendments to 37 CFR 1.704(c)(12) and 1.704(f) with regard to possible PTA reduction if the application is not in condition for examination within 8 months of its filing date or commencement of the national stage under 35 U.S.C. 371(b) or (f).

    —Updated 37 CFR 1.703(b)(1) and 37 CFR 1.704(c)(10), (12), (13), and (14) and (d)(1) to include changes effective either January 9, 2015 or March 10, 2015. The changes pertain to patent term adjustment calculations when a request for continued examination is filed. Added text that briefly summarizes the regulatory changes.

    —Modified text to clarify the multiple amendments over the last three years to the provision that defines further prosecution via a continuing application as a circumstance constituting a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.

    2731

    —Added an Editor Note to explain the limited applicability of some paragraphs of 37 CFR 1.703.

    —Modified text to clarify that the recent changes to 37 CFR 1.703(a)(1) apply to patents granted on or after January 14, 2013.

    —Updated 37 CFR 1.703(b)(1) to include changes effective January 9, 2015. The changes pertain to patent term adjustment calculations when a request for continued examination is filed and are set forth in the final rule Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee,80 FR 1346 (January 9, 2015). Added text that further explains the regulatory change. Specifically, provided several paragraphs that discuss what the Office deems "time consumed by continued examination."

    —Revised to discuss Novartis AG v. Lee, 740 F.3d 593, 109 USPQ2d 1385 (Fed. Cir. 2014) which pertain to PTA calculations when a request for continued examination is filed.

    —Clarified that under 37 CFR 1.703(e), the provisions of 37 CFR 41.31 are applicable if the notice of allowance was issued prior to September 17, 2012 in order to define when jurisdiction passes from the Board.

    2732

    Added an Editor Note to explain the limited applicability of some paragraphs of 37 CFR 1.704.

    —Updated 37 CFR 1.704 to include changes effective December 18, 2013 and added text to describe the December 18, 2013 amendments to 37 CFR 1.704(c)(12) and 1.704(f) with regard to possible PTA reduction if the application is not in condition for examination within 8 months of its filing or commencement of national stage under 35 U.S.C. 371(b) or (f).

    —Updated 37 CFR 1.704(c)(10), (12), (13), and (14) and (d)(1) to include changes effective March 10, 2015. The changes pertain to patent term adjustment calculations when a request for continued examination is filed and are from the final rule Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee,80 FR 1346 (January 9, 2015). Added text that discusses the regulatory changes. Specifically, modified the paragraphs discussing 37 CFR 1.704(c)(10) to indicate whether certain papers filed after a notice of allowance will or will not result in a reduction of any earned adjustment under 37 CFR 1.703; added several paragraphs to explain the new provision in 37 CFR 1.704(c)(12); and added a paragraph to explain the changes made to 37 CFR 1.704(d)(1).

    —Added reference to Gilead Sciences Inc. v. Lee, 778 F.3d 1341, 113 USPQ2d 1837 (Fed. Cir. 2015), which held that submission of an information disclosure statement after a reply to a restriction requirement and prior to an Office action, without a safe harbor statement under 37 CFR 1.704(d), is an applicant delay under 37 CFR 1.704(c)(8).

    —Modified to clarify that under 37 CFR 1.704(c)(10), the applicant delay (if any) would end on the date the patent issues if the Office does not mail a response to the applicant's post-allowance paper and the patent issues in less than four months from the applicant's post-allowance paper.

    —Added reference to Mohsenzadeh v. Lee, 115 USPQ2d 1483 (Fed. Cir. 2015) which held that PTA accrued in a parent application does not carry over to a continuing or divisional application.

    2733

    —Added an Editor Note to state the applicability of 37 CFR 1.705(a) based upon the effective date of the AIA Technical Corrections Act (Public Law 112-274).

    —Included a citation to Treatment of Letters Stating That the USPTO's Patent Term Adjustment Determination Is Greater Than What the Applicant or Patentee Believes Is Appropriate,75 FR 42079 (July 20, 2010), 1357 OG 262 (August 24, 2010) to support the already stated policy that the Office will not act on letters from patentees stating that the patent term adjustment is greater than what they expected.

    2734

    —Added an Editor Note to state the applicability of 37 CFR 1.705(b) and (c) based upon the effective date of the AIA Technical Corrections Act (Public Law 112-274).

    Redesignated the former introductory text as subsection I. Office Procedure for the Treatment of Requests for Reconsideration of Patent Term Adjustment. In subsection I, added text to explicitly explain the Office's procedure of handling requests for reconsideration of patent term adjustment. For example, the text discusses the possible actions if the Office finds that the patent term adjustment printed on the patent is correct or incorrect. In addition, added a discussion of Novartis AG v. Lee, 740 F.3d 539, 109 USPQ2d 1385 (Fed. Cir. 2014), which held that there was not equitable tolling of the 180 day period to file a civil action in district court and Bristol-Myers Squibb Co. v. Kappos, 891 F.Supp.2d 135 (D.D.C. 2012), which did toll the same 180 day period because patentee timely requested reconsideration of the PTA determinations by the Office.

    —Redesignated former subsection I as subsection II. In subsection II, added text to clarify when a request for reinstatement under 37 CFR 1.705(c) must be filed in comparison to a request for reconsideration under 37 CFR 1.705(b).

    —Added new subsection III to describe an optional procedure to request recalculation of the patent term adjustment for patents that meet the following criteria: (1) issued between January 14, 2013 and May 20, 2014; and (2) resulted directly from international applications (e.g., applications that entered the national stage under 35 U.S.C. 371). Any requests under this optional procedure must have been filed prior to July 31, 2014. Form PTO/SB/132 can be used to make a request under this optional procedure and a copy of the form is reproduced.

    2736

    —Added an Editor Note to state the applicability of 37 CFR 1.705(d) is based upon the effective date of the AIA Technical Corrections Act (Public Law 112-274).

    Clarified text in regard to which provision of 37 CFR 1.705 applies depending on whether the patent was granted on/after January 14, 2013 or prior to January 14, 2013.

    2752

    —Corrected 35 U.S.C. 156 by adding the phrase "which claims … the approved product" in paragraph (d)(1)(B) and the last two sentences in paragraph (d)(1)(E) regarding the date on which a product receives permission.

    [top]

      

    CHAPTER 2800:

    2805

    —Replaced form PTO/SB/81B and references thereto with form PTO/AIA/81B, which is an updated version of form PTO/SB/81B.

    2806

    —In the second paragraph, changed "supplemental reexamination" to "supplemental examination" in order to use proper nomenclature.

    2816

    —Added subsections I and II. Text previously in the section is moved to new subsection I. Added subsection II to discuss policies and procedures on making a determination on the request for supplemental examination when litigation is copending.

    2816.02

    —Changed "SNQ" to "substantial new question of patentability" in several locations.

    —In subsection I, modified text to make the SNQ determination discussion consistent with MPEP § 2242 as amended in this revision of the MPEP. For example, changed "earlier examination" to "earlier concluded examination or review" and expanded its definition to include new proceedings, such as supplemental examination and post-grant reviews by the Board.

    2818.01

    —Updated form PTO-2302 to the current version.

    2821

    —In the first sentence, changed "supplemental reexamination" to "supplemental examination" in order to use proper nomenclature.

    —Changed "SNQ" to "substantial new question of patentability."

    [top]

      

    CHAPTER 2900:

    Chapter 2900 is newly added to the MPEP and provides guidance related to international design applications.

    2901

    —Provides a general overview of the Hague Agreement Concerning the International Registration of Industrial Designs. Discusses the flow of an international design application from filing to formal examination, registration, and publication by the International Bureau, and examination by the Offices of the designated Contracting Parties.

    2902

    —References 35 U.S.C. 381, 37 CFR 1.9 and 1.1011, Article 1 of the Hague Agreement, and Rule 1 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement for definitions of relevant terms. States that within the context of Chapter 2900, "Article" means an article of the Hague Agreement; "Rule" means a rule under the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement and "Administrative Instruction" means the Administrative Instruction for the Application of the Hague Agreement referred to in Rule 34.

    2903

    —Discusses the specific declarations made by the United States under the Hague Agreement where the United States is designated in an international design application.

    2904

    —Reproduces and discusses Hague Article 3 regarding who is entitled to file an international design application.

    2905

    —Reproduces and discusses Hague Article 4, which indicates that an international design application may be filed either directly with the International Bureau or indirectly with an applicant's Contracting Party.

    2905.01

    —Reproduces 35 U.S.C. 382, and 37 CFR 1.1002, 1.1011, 1.1012, and 1.1045 and discusses procedures for filing through the USPTO as an office of indirect filing.

    —Explains that international design applications may be filed via EFS-Web, mail, or hand delivery to the Customer Service Window at the USPTO Alexandria headquarters. Explains that the Priority Mail Express® provisions of 37 CFR 1.10 apply to international design applications, but international design applications are excluded from Certificate of Mailing or Transmission procedures of 37 CFR 1.8.

    2906

    —Reproduces Hague Article 9, Hague Rules 6, 13 and 14, and discusses the requirements for according a filing date to an international design application.

    2907

    —Reproduces relevant portions of Hague Articles 5 and 10, Hague Rule 15, and discusses international registration and date of international registration.

    2908

    —Reproduces and discusses 35 U.S.C. 381 and 384, and 37 CFR 1.1023, directed to the filing date of an international design application in the United States.

    2909

    —Reproduces Hague Article 5, Hague Rule 7, 35 U.S.C. 383, and 37 CFR 1.1021, directed to the contents of the international design application.

    —Subsection I discusses mandatory contents required in all international design applications.

    —Subsection II discusses additional mandatory contents required by certain Contracting Parties.

    —Subsection III discusses optional contents as addressed in Hague Rule 7(5) and 37 CFR 1.1021(c).

    —Subsection IV is directed to the contents required of international applications designating the United States.

    2909.01

    —Reproduces 37 CFR 1.1022, sets forth relevant portions of Hague Rules 1 and 7, and discusses the requirement that international design applications must be presented on the forms established by the International Bureau, an electronic interface made available by the International Bureau, or any form or electronic interface having the same contents and format.

    2909.02

    —Discusses the requirements of reproductions (drawings) in the context of 37 CFR 1.1026, Hague Rule 9 and Hague Administrative Instructions 401-405.

    2902.02(a)

    —Discusses the filing of reproductions, including drawings, photographs, or combinations thereof, with the USPTO through EFS-Web.

    2909.03

    —Discusses where annex forms may be accessed and that annex forms specific to the designation of the USPTO include those for submitting the inventor's oath or declaration, information disclosure statements, and certification of micro entity status.

    2910

    —Reproduces and discusses 37 CFR 1.1031 and Hague Rule 12 as related to the payment of fees. Subsection I discusses the transmittal fee. Subsection II discusses payment of the basic fee, publication fee, designation fee, and individual designation fee required by the USPTO. Subsection III discusses the payment of fees payable to the International Bureau through the USPTO as an office of indirect filing.

    2911

    —Reproduces and discusses 37 CFR 1.1041 and Hague Rule 3 with respect to who may represent an applicant before the International Bureau. Emphasizes that a representative of an applicant before the USPTO as an office of indirect filing must be a practitioner registered in compliance with 37 CFR 11.6 or granted a limited recognition to practice under 37 CFR 11.9(a) or (b).

    2912

    —Reproduces and discusses 37 CFR 1.1042 and Hague Administrative Instruction 302 with respect to establishing a correspondence address for the applicant.

    2913

    —Reproduces 35 U.S.C. 387 and 37 CFR 1.1051. Discusses the manner by which an applicant may petition to excuse, with respect to the United States, applicant's failure to act within prescribed time limits under the Hague Agreement where the delay in applicant's failure to act was unintentional.

    2914

    —Reproduces 35 U.S.C. 384 and 37 CFR 1.1052. Discusses the process by which an applicant may petition for the conversion of an international design application designating the United States to a design application filed under 35 U.S.C. chapter 16.

    2915-2919

    —Reserved for future use.

    2920

    —Reproduces 35 U.S.C. 389, and select paragraphs of 37 CFR 1.9, Hague Article 10, Hague Article 12, and Hague Article 14. Explains that upon receipt of the publication under Hague Article 10(3), the Office will establish an application file for an international design application which designates the United States and examine said application in due course.

    2920.01

    —Reproduces 37 CFR 1.41(f). Discusses the requirements under 37 CFR 1.48 for requests for correction of inventorship and requests to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors.

    2920.02

    —Explains that the rules governing the applicant set forth in 37 CFR 1.42-1.46 are generally applicable to nonprovisional international design applications.

    2920.03

    —Reproduces 37 CFR 1.1066 and discusses how the Office will establish a correspondence address.

    2920.04

    —Section title only.

    2920.04(a)

    —Discusses the requirements for the specification of a nonprovisional international design application.

    —Subsection I discusses the requirements for the title and reproduces form paragraphs 15.05.01 and 15.59 for use by examiners.

    —Subsection II discusses description requirements and explains that statements in the specification of a design application filed under 35 U.S.C. chapter 16 are also generally permissible in the specification of a nonprovisional international design application. Also discusses the use of broken lines in nonprovisional international design applications.

    —Subsection III reproduces and discusses 37 CFR 1.1025. Explains that a design application may only include one claim and explains the proper terminology required for the claim.

    2920.04(b)

    —Reproduces 37 CFR 1.1026. Discusses the formal requirements for reproductions in nonprovisional international design applications. Explains that reproductions may be submitted in either black and white or color. Sets forth form paragraphs for use by examiners when reproductions are objected to or include matter not forming part of the claimed design.

    2920.04(c)

    —Reproduces 37 CFR 1.1021(d)(3) and 37 CFR 1.1067(b). Explains that international design applications that designate the United States are required to contain an inventor's oath or declaration. The International Bureau reviews the international design application designating the United States to ensure that the required inventor's oath or declaration is provided.

    2920.05

    —Reproduces 35 U.S.C. 389 and 37 CFR 1.1062 and 1.1063. Discusses similarities and differences in examination practice for nonprovisional international design applications and design applications filed under 35 U.S.C. chapter 16.

    2920.05(a)

    —Reproduces portions of Hague Rules 12 and 18, and 37 CFR 1.1063. Discusses the Notification of Refusal.

    2920.05(b)

    —Reproduces Hague Article 13 and 37 CFR 1.1064. Explains that only one independent and distinct design may be claimed in each nonprovisional international design application.

    2920.05(c)

    —Explains that the requirements of 35 U.S.C. 112(a) and (b) apply to nonprovisional international design applications. Sets forth form paragraphs for use by examiners when making rejections under 35 U.S.C. 112(b).

    2920.05(d)

    —Reproduces 35 U.S.C. 386 and 37 CFR 1.55, and discusses foreign priority claims.

    2920.05(e)

    —Reproduces 35 U.S.C. 386(c) and 37 CFR 1.78(a), (d), and (e), and discusses domestic benefit claims.

    2920.05(f)

    —Explains that applicants for international design applications are subject to the duty to disclose information material to patentability as defined in 37 CFR 1.56, and discusses filing of an information disclosure statement in an international design application.

    2920.06

    —Explains the procedure to be followed when a nonprovisional international design application is in condition for allowance.

    2921-2929

    —Reserved for future use.

    2930

    —Reproduces Hague Rule 22, Hague Article 16, and 37 CFR 1.1065. Explains the process by which an applicant may request correction or other change in an international design registration.

    2931-2939

    —Reserved for future use.

    2940

    —Reproduces Hague Rule 18bis and 37 CFR 1.1068 and explains that upon issuance of a patent on a nonprovisional international design application, the Office will send to the International Bureau a statement that protection has been granted in the United States.

    2941-2949

    —Reserved for future use.

    2950

    —Reproduces 35 U.S.C. 389, 35 U.S.C. 173, 37 CFR 1.1071 and 37 CFR 1.1031. Explains that a grant of protection for an industrial design that is the subject of an international registration shall only arise in the United States through the issuance of a patent pursuant to 35 U.S.C. 389(d) or 171, and in accordance with 35 U.S.C. 153.

    [top]

      

    CHAPTER FPC:

    Chapter FPC is newly added to the MPEP and provides a consolidated listing of the form paragraphs of the MPEP. The FPC sections within this chapter are organized by form paragraph number, and do not necessarily correspond to the chapters of the MPEP in which the form paragraphs appear.

    [top]

United States Patent and Trademark Office
This page is owned by Patents.
Last Modified: 11/04/2015 17:11:56