903.08 Applications: Assignment and Transfer [R-07.2015]
The titles "supervisory patent examiner" and "primary examiner," as used in this Chapter 900, include in their definition any person designated by them to act on their behalf. It is recognized that authority to accept or refuse the transfer of an application may be delegated when such authority is deserved.
The Technology Center (TC) to which an application is assigned is responsible for its examination until such time as the application is officially transferred to another TC.
The primary examiners have full authority to accept any application submitted to them that they believe is properly classifiable in a class in their art unit.
903.08(a) New Applications [R-07.2015]
New nonprovisional applications are assigned to the various Technology Centers (TCs) in the first instance by the Office of Patent Application Processing (OPAP).
When a new application is received which, in the opinion of the primary examiner, does not belong to his or her TC, he or she may request transfer of it to another TC. See MPEP § 903.08(d).
If the search in connection with the first action develops art showing proper classification elsewhere, the transfer is usually initiated before the first action is prepared and mailed.
903.08(b) Classification and Assignment to Examiner [R-07.2015]
Every nonprovisional application, new or amended, and including the drawings, if any, when first assigned to a Technology Center (TC) must be classified and assigned to an examiner for examination. The supervisory patent examiner normally assigns the application to an examiner. Provisional applications are not classified or assigned since they are not examined.
If an examiner other than the supervisory patent examiner is given the responsibility of assigning applications, time so spent may, at the TC Director’s discretion, be charged to "Assisting SPE."
903.08(c) Immediate Inspection of Amendments [R-08.2012]
Upon the receipt of an amendment which makes a transfer proper, steps should be taken promptly in accordance with the transfer procedure outlined in MPEP § 903.08(d).
903.08(d) Transfer Procedure [R-10.2019]
I. TRANSFER BETWEEN ART UNITS WITHIN THE SAME TECHNOLOGY CENTER
Each Technology Center (TC) has developed internal procedures for transferring application between art units and resolving application assignment disputes.
II. TRANSFERS BETWEEN DIFFERENT TECHNOLOGY CENTERS
Where a supervisory patent examiner (SPE) believes an application, either new or amended, does not belong in their art unit, they may request transfer of the application from their art unit (the "originating" art unit) to another art unit of a different TC (the "receiving" art unit).
The decision as to the classification resolution and assignment of an application is made by agreement between the SPEs involved in the transfer. If no agreement can be reached between the SPEs, the application may be forwarded to the classification dispute TC representative panel of the TC where the application was originally assigned for a final decision. The classification dispute TC representative panel consists of designated representatives from each TC.
Before an application is sent to a receiving art unit of a different TC, the application must be fully reviewed to ensure that all appropriate areas in the originating TC have been considered with respect to the classification of the application. In all cases when a transfer is initiated, the application must be sent on transfer inquiry to a receiving art unit. Even if the application is confusing or contains unfamiliar subject matter, the SPE of the originating art unit must make his or her best judgment as to where the application should be classified and attempt to transfer it there.
Where an application’s claims include a combination of limitations for plural disciplines (chemical, electrical, or mechanical), an SPE or primary examiner may request transfer to another discipline, notwithstanding the fact that the controlling claims are properly classified in his or her art unit, on the ground that the application is "best examinable" in the other discipline. In this instance, the SPE or primary examiner requesting transfer should cite art showing the limitations classifiable in his or her discipline. For discussion of the situations in which assignment of an application on a "best examinable" basis may be proper, see MPEP § 903.08(e).
III. PROCESS FOR TRANSFER
When the SPE or primary examiner of the originating art unit determines that a transfer is appropriate, they must initiate a request through the Patent Transfer Inquiry (PTI) system (https://ptiweb.uspto.gov/PTIUI/#/resources/8 ) and provide a full explanation of the reasons for classification in the receiving art unit. At least one of the following should be included in the form in the space provided:
- (A) Identification of the controlling claim;
- (B) Identification of any existing informal transfer agreement; or
- (C) Other reasons – with full explanation.
If the SPE or examiner of the originating art unit believes an application has been improperly assigned to their art unit, but is unable to determine an appropriate place to send the application, a "gatekeeper" or search assistant should be consulted. A listing of examiners who function in this role may be found at http://ptoweb/patents/tsa/. It is noted that "gatekeepers" or search assistants exist in all of the TCs except the TC that examines design applications (TC 2900).
If the receiving SPE or primary examiner agrees to accept the application, they classify and assign the application. The transfer is effected by accepting the application in PTI.
If the receiving SPE or primary examiner refuses to accept the application, the reasons for refusal must be entered in PTI. The refusal must be recorded in PTI. Where the application is an application (other than a PCT application) that has not been docketed to an examiner, the originating art unit may then either accept the application for examination or send the disputed transfer application to the classification dispute TC representative panel for final resolution. The panel considers the statements and evidence of both the originating and receiving art units and assigns the application to the art unit that has jurisdiction over the art in which the controlling claims of the application are properly classified.
Under certain circumstances, the classification dispute TC representative panel, contrary to controlling classification rules, may assign an application to a class or art unit which the panel deems is better equipped to examine the application. See MPEP § 903.08(e).
Every application, no matter how peculiar or confusing, must be assigned somewhere for examination. Thus, in contesting the assignment of an application, the SPE or primary examiner should indicate another class that is a better class in which to classify the application, rather than simply arguing that the application does not fit the examiner’s class.
If an application contains both classification issues and issues unrelated to classification, e.g., a dispute both as to the classification of claims and the propriety of restriction, the issues unrelated to classification should be resolved first. If, thereafter, classification issues still need to be addressed, application transfer may be appropriate. For the procedure in the classification groups for applications which contain examining corps issues, see MPEP § 903.08(e).
The question of need for a restriction requirement does not influence the determination of transfer.
If an application has been assigned a class/subclass by the Office of Patent Application Processing (OPAP) and the application is routed to an art unit that does not examine applications assigned to that class/subclass, an IFW message to the "OIPEClass/GAUMismatch" IFW mailbox should be sent.
903.08(e) General Guidelines Governing the Assignment of Nonprovisional Applications for Examination [R-10.2019]
This section applies only to nonprovisional applications. It does not apply to provisional applications since such applications are not examined.
The following are only general guides, and exceptions frequently arise because of some unusual condition. Patent examiners are confronted with an already existing classification made up of newly revised classes, those revised years ago and which have somewhat outgrown their definitions and limits, and still others made a generation ago and never changed. Also, these classes are based on different theories and plans, some on art, some on structure, some on functions, and some on the material worked upon. The patent examiners cannot change this existing condition as each application comes up for assignment, but must seek to place the cases where they are appropriately assigned. An application will be assigned as follows:
- (A) The assignment of nonprovisional applications follows, as far as possible, the rules or principles governing the classification of patents. Applications are generally assigned on the basis of where the application would have an original classification, if the claims it contains were in a patent.
- (B) The criteria by which the original classification is determined are set forth in MPEP § 903.07.
- (C) The claims and statement of invention are generally taken as they read; however, claims must be read in light of the disclosure (claimed disclosure). Any attempt to go behind the record and decide the case upon what is deemed the "real invention" would, it is believed, introduce more errors than such action would cure. Supervisory patent examiners (SPEs) cannot possess the specific knowledge of the state of the art in all the classes that the patent examiners collectively possess. Further, such questions are matters of merit for the examiners to determine and are often open to argument and are subject for appeal.
- (D) Within a class, looking down from the top of the schedule, the OR subclass is chosen from among the classifications of the claimed disclosure according to whichever one is the most indented subclass of the first subclass array.
- (E) As stated in MPEP § 903.07, the location of the United States patents constituting the prior art is generally controlling over all else. (Note: Where time permits, obvious misplacements of the patents constituting the prior art are corrected, but to straighten all lines as the cases come up for assignment would require the time of several people.)
- (F) Ordinarily, an application cannot be assigned to a class which includes one element or part only of several claimed in combination. The claim is treated in its entirety.
- (G) The classification dispute TC representative panel is authorized in all cases, where they evaluate the facts as warranting it, to assign applications for examination to the TC best able to examine the same. Since assignment for examination on this basis will at times be contrary to classification of patents containing the same character of claims, the classification dispute TC representative panel will indicate the proper classification of the patent, if such claims are allowed.
- Thus, in cases where there is a claim drawn to hybrid or mixed subject matter and the SPE in one discipline determines that the application requires consideration by, or may be best examined by, a TC in one of the other technical disciplines, chemical, electrical, or mechanical, he or she may request a transfer of the application on a "best examinable" basis, in accordance with this subsection.
- Some examples of applications which may be thus submitted include the following:
- (1) An application containing a hybrid claim wherein, for instance, a product is defined merely in terms of the process for producing it. See MPEP § 705.01(e), situation (A).
- (2) Where an application properly assigned to a mechanical or electrical class contains at least one claim to mixed subject matter, a part of which is chemical, the application may be assigned to the appropriate chemical art unit for examination; or where the application is properly assigned to a mechanical class and a claim therein contains electrical subject matter, the application may be assigned to the appropriate electrical art unit for examination.
As indicated earlier, when an application which had been assigned for examination in accordance with this subsection ultimately is allowed, it will be classified according to the controlling claim. In effect, assignment for examination may be on a "best examinable" basis, but the patent will issue and be classified according to the rules of superiority in classification; thus, the search file will have a constant set of rules governing placement of patents therein.
Where an application is being reassigned from one examining discipline to another, under the provisions of the "best examinable" practice, the person requesting the transfer is ordinarily required to cite references pertinent to the claimed features falling under the jurisdiction of the art within his or her discipline. In those cases wherein the application of the reference(s) is not evident or clear, the transferring examiner should include a brief statement explaining the relation and possible application of the reference(s) to the claim(s); in case of dispute as to the necessity of this procedure, the classification dispute TC representative panel has power to require the statement.
- (H) When an application has been taken up by an examiner for action and a requirement to restrict is found necessary, a part of the claims being directed to matter classifiable in the TC where the case is being examined, an action requiring restriction should be made without seeking a transfer of the case to another TC. The action of the applicant in reply to the requirement for restriction may result in making a transfer of the application unnecessary.
- (I) Ordinarily, where all the claims of an application are for an article made of a specific composition or alloy with no other structure of the article recited, the application will be assigned to the composition or alloy class.
- (J) A class of cases exists in which either no art or a divided art is found and in which no rule or principle is involved. Such cases are placed where, in the judgment of the classification TC representative panel, they will be best searched and adjudicated. It is often impossible to so explain a decision in this class of cases as to satisfy, or in any way aid, the examiners interested. Indeed, the reasons for or against sending such cases one place or another may be so evenly balanced that no reason of any value can be given.
- (K) An examiner seeking the transfer of a case may make a search, both of his or her own class and the class to which he or she thinks the case should be transferred, and the examiner in charge of the art unit should ensure the record includes the result of the search.
- (L) When an application is received by the classification dispute TC representative panel in which there is a matter under dispute which is not related to the classification of a claim but which is in the purview of the TCs, e.g., propriety of a restriction requirement, timeliness of submission for transfer, etc., as well as a dispute over the classification of claims, the application will be returned to the originating TC for resolution on the issues unrelated to the classification.
It is important that newly received applications be immediately screened for these situations so that, if necessary, the applications may be promptly returned to the originating TC.
If after resolution of the issues unrelated to the classification, there is still a dispute as to which TC should examine the application, the originating application may be returned to the classification dispute TC representative panel for assignment.
I. ROUTING OF APPLICATIONS TRANSFERRED BETWEEN TCs
The flowchart below shows the routing of an application between TCs. (For routing of applications between art units within the same TC, see MPEP § 903.08(d).) The application should be considered by the receiving art unit in the TC (TC1), which will accept the application and assign it to an examiner, or forward it to an art unit in another TC (TC2) for consideration. An art unit in TC2 will classify and assign the application to an examiner, return the application to the SPE of the originating art unit, or forward it to an art unit in another TC (TC3). If the art unit in TC2 is not aware of any other likely classification, the application may be returned directly to the SPE of the originating art unit in TC1. In any of these scenarios, the decisions concerning the transfer must be recorded in the Patent Transfer Inquiry (PTI) system.
Where the application is forwarded to an art unit in TC3 and the art unit in TC3 declines to accept the application, the application should be returned to the SPE of the originating art unit in TC1.
If an art unit in TC2 or TC3 declines to accept the application and the application is returned to the SPE of the originating art unit in TC1, the SPE of the art unit in TC1 may forward the application to a classification dispute TC representative panel for resolution. The SPE of the art unit in TC1 may contact a TC classification panel representative within his or her TC. The application will be given to the TC classification panel representative and the representative will contact either the TC2 or TC3 representative (forming a classification dispute TC representative panel) to set up a conference. The classification dispute TC representative panel will evaluate any evidence presented by the disputing TCs, and make a decision on the proper classification and assignment of the application. The decision of the classification dispute TC representative panel will be final and binding.
II. PATENT FILE WRAPPER
SPEs and examiners must use the Patent Transfer Inquiry (PTI) system, which creates a record of the transfer inquiry history of each application and facilitates tracking of applications.