Chapter 700 - Examination of Applications
701 Statutory Authority for Examination [R-10.2019]
35 U.S.C. 131 Examination of application.
The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.
The main conditions precedent to the grant of a patent to an applicant are set forth in 35 U.S.C. 101, 102, 103, and 112.
35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
See MPEP §§ 2104 – 2109 and 2157 for a discussion of inventions that are not considered to be patentable under 35 U.S.C. 101.
35 U.S.C. 100 Definitions.
[Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only applicable to patent applications and patents subject to the first inventor to file provisions of the AIA (35 U.S.C. 100 (note) ). See pre-AIA 35 U.S.C. 100(e) for paragraph (e) as applicable to patent applications and patents not subject to the first inventor to file provisions of the AIA.]
When used in this title unless the context otherwise indicates -
- (a) The term "invention" means invention or discovery.
- (b) The term "process" means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
- (c) The terms "United States" and "this country" mean the United States of America, its territories and possessions.
- (d) The word "patentee" includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.
- (e) The term "third-party requester" means a person requesting ex parte reexamination under section 302 who is not the patent owner.
- (f) The term "inventor" means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
- (g) The terms "joint inventor" and "coinventor" mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.
- (h) The term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
- (i)
- (1) The term "effective filing date" for a claimed invention in a patent or application for patent means—
- (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
- (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).
- (2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
- (1) The term "effective filing date" for a claimed invention in a patent or application for patent means—
- (j) The term "claimed invention" means the subject matter defined by a claim in a patent or an application for a patent.
Pre-AIA 35 U.S.C. 100 Definitions.
[Editor Note: Pre-AIA 35 U.S.C. 100(e) as set forth below is not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). For an application or patent subject to the first inventor to file provisions of the AIA, see 35 U.S.C. 100.]
When used in this title unless the context otherwise indicates -
*****
- (e) The term "third-party requester" means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.
702 Requisites of the Application [R-07.2015]
The Office of Patent Application Processing (OPAP) reviews application papers to determine whether a new application is entitled to a filing date. Note that as a result of the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, December 18, 2012, and specifically, the amendments to the patent laws to implement the provisions of the Patent Law Treaty (PLT) in title II of the PLTIA, the filing date requirements for applications filed on or after December 18, 2013 are different from the filing date requirements for applications filed prior to December 18, 2013. Except for design applications, the filing date for nonprovisional applications filed on or after December 18, 2013 is the date on which a specification, with or without claims, is received in the Office. See MPEP § 601.01(a) for additional information. Similarly, provisional applications filed on or after December 18, 2013 may receive a filing date even if the application is filed without drawings. See MPEP § 601.01(b) for additional information. The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. See MPEP § 601.01(a). Also, for applications filed on or after December 18, 2013, an application (other than an application for a design patent) is not required to include any drawings to be entitled to a filing date. It should be noted, however, 35 U.S.C. 111(a)(2) continues to require the application to include a drawing as prescribed by 35 U.S.C. 113, which requires a drawing where necessary for the understanding of the subject matter sought to be patented. Therefore, any drawings necessary for the understanding of the invention should be submitted with the application on filing.
If the subject matter of the application admits of illustration by a drawing to facilitate understanding of the invention, including where a drawing is necessary for the understanding of the invention, the Office will continue the practice of requiring a drawing. See MPEP § 608.02, subsection IV. As discussed in MPEP § 608.02, this requirement prior to examination should continue to be extremely rare and limited to the situation in which no examination can be performed due to the lack of an illustration of the invention.
In addition, 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. See MPEP § 601.01(a), subsection III.
The minimal formal requirements resulting from the implementation of the PLTIA and PLT should not be viewed as prescribing a best practice for the preparation and filing of a patent application. The preparation of claims to any claimed invention for which patent protection is desired and the inclusion of such claims with the application on filing will help ensure that the application satisfies the disclosure requirements of 35 U.S.C. 112(a) for any such claimed invention. Similarly, while the absence of any drawing on the filing of an application no longer raises a question as to whether the application is entitled to a filing date, the preparation of drawings for a provisional or nonprovisional application is prudent where a drawing is necessary for the understanding of the subject matter sought to be patented, and inclusion of such drawing(s) with the application on filing will help ensure that the requirements of 35 U.S.C. 113 are satisfied for any such claimed invention.
If an application (other than an application for a design patent) is filed on or after December 18, 2013, without any claims, OPAP will issue a notice giving the applicant a time period within which to submit at least one claim in order to avoid abandonment. An application will not be placed on an examiner’s docket unless and until the application includes a specification including at least one claim.
For applications filed under pre-PLT (AIA) 35 U.S.C. 111 prior to December 18, 2013, a filing date is assigned to a nonprovisional application as of the date a specification containing a description and claim and any necessary drawings are filed in the U.S. Patent and Trademark Office (Office). See pre-PLT (AIA) 37 CFR 1.53(b).
Once OPAP determines that the application is entitled to a filing date, OPAP then determines whether the application as filed is complete, e.g., includes the required fees, the inventor’s oath or declaration, and all pages of the specification and drawings. If the papers filed are not entitled to a filing date, OPAP will send a "Notice of Incomplete Application" informing applicant of the deficiencies; if the application is entitled to a filing date but it is not complete, an OPAP notice (e.g., a "Notice of Omitted Item(s)") will be sent indicating that the application papers so deposited have been accorded a filing date and indicating what papers must be filed to complete the application.
The examiner should be careful to see that the application is complete when taken up for examination. If, for example, pages of the specification or drawings are missing, the examiner should determine whether the application is entitled to the filing date assigned, and what action should be taken. See MPEP §§ 601.01(d) and 601.01(g) for guidance.
702.01 Obviously Informal Cases [R-07.2015]
When an application is taken up for examination and it is then discovered to be impractical to give a complete action on the merits because of an informal or insufficient disclosure, the following procedure may be followed:
- (A) A reasonable search should be made of the invention so far as it can be understood from the disclosure, objects of invention and claims and any apparently pertinent art cited. In the rare case in which the disclosure is so incomprehensible as to preclude a reasonable search, the Office action should clearly inform applicant that no search was made;
- (B) Any form that lists informalities and any additional formal requirements to be made should be included in the first Office action (see MPEP § 707.07(a));
- (C) A requirement should be made that the specification be revised to conform to idiomatic English and United States patent practice;
- (D) The claims should be rejected as failing to define the invention in the manner required by 35 U.S.C. 112 if they are informal. A blanket rejection is usually sufficient.
The examiner should attempt to point out the points of informality in the specification and claims. The burden is on the applicant to revise the application to render it in proper form for a complete examination.
If a number of obviously informal claims are filed in an application, such claims should be treated as being a single claim for fee and examination purposes.
It is to applicant’s advantage to file the application with an adequate disclosure and with claims which conform to the U.S. Patent and Trademark Office usages and requirements. This should be done whenever possible. If, however, due to the pressure of a Convention deadline or other reasons, this is not possible, applicants are urged to submit promptly, preferably within 3 months after filing, a preliminary amendment which corrects the obvious informalities. The informalities should be corrected to the extent that the disclosure is readily understood and the claims to be initially examined are in proper form, particularly as to dependency, and otherwise clearly define the invention. "New matter" must be excluded from these amendments since preliminary amendments filed after the filing date of the application do not enjoy original disclosure status. See MPEP § 608.04(b).
Whenever, upon examination, it is found that the terms or phrases or modes of characterization used to describe the invention are not sufficiently consonant with the art to which the invention pertains, or with which it is most nearly connected, to enable the examiner to make the examination specified in 37 CFR 1.104, the examiner should make a reasonable search of the invention so far as it can be understood from the disclosure. The action of the examiner may be limited to a citation of what appears to be the most pertinent prior art found and a request that applicant correlate the terminology of the specification with art-accepted terminology before further action is made.
Use form paragraph 7.01 where the terminology is such that a proper search cannot be made.
¶ 7.01 Use of Unconventional Terminology, Cannot Be Examined
A preliminary examination of this application reveals that it includes terminology which is so different from that which is generally accepted in the art to which this invention pertains that a proper search of the prior art cannot be made. For example: [1]
Applicant is required to provide a clarification of these matters or correlation with art-accepted terminology so that a proper comparison with the prior art can be made. Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
Examiner Note:
1. Use this or form paragraph 7.02 when a proper search cannot be made. However, see MPEP § 702.01 which requires a reasonable search.
2. In bracket 1, fill in an appropriate indication of the terminology, properties, units of data, etc. that are the problem as well as the pages of the specification involved.
3. For the procedure to be followed when the drawing is not acceptable, see MPEP §§ 608.02(a) and 608.02(b).
Use form paragraph 7.02 where the application is so incomprehensible that a reasonable search cannot be made.
¶ 7.02 Disclosure Is Incomprehensible
The disclosure is objected to under 37 CFR 1.71, as being so incomprehensible as to preclude a reasonable search of the prior art by the examiner. For example, the following items are not understood: [1]
Applicant is required to submit an amendment which clarifies the disclosure so that the examiner may make a proper comparison of the invention with the prior art.
Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.
Examiner Note:
1. Use this form paragraph when a search cannot be made.
2. In bracket 1, indicate the page numbers and features which are not understood.
3. See form paragraphs 6.28 and 6.30 for improper idiomatic English.
4. Use form paragraphs 7.31.01 – 7.31.04, as appropriate, for a rejection of claims (when necessary) based on the deficiencies set forth in this form paragraph.
For the procedure to be followed when the drawing is not acceptable, see MPEP §§ 608.02(a) and 608.02(b).
703 [Reserved]
704 Search and Requirements for Information [R-08.2012]
704.01 Search [R-08.2012]
After reading the specification and claims, the examiner searches the prior art. The subject of searching is more fully treated in MPEP Chapter 900. See especially MPEP §§ 904 through 904.03. The invention should be thoroughly understood before a search is undertaken. However, informal cases, or those which can only be imperfectly understood when they come up for action in their regular turn are also given a search, in order to avoid piecemeal prosecution.
PREVIOUS EXAMINER’S SEARCH
When an examiner is assigned to act on an application which has received one or more actions by some other examiner, full faith and credit should be given to the search and action of the previous examiner unless there is a clear error in the previous action or knowledge of other prior art. In general the second examiner should not take an entirely new approach to the application or attempt to reorient the point of view of the previous examiner, or make a new search in the mere hope of finding something. See MPEP § 719.05.
704.02-704.09 [Reserved]
704.10 Requirements for Information [R-07.2015]
37 C.F.R. 1.105 Requirements for information.
- (a)
- (1) In the course of examining or treating a matter in a pending or abandoned application, in a patent, or in a reexamination proceeding, including a reexamination proceeding ordered as a result of a supplemental examination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
- (i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
- (ii) Search: Whether a search of the prior art was made, and if so, what was searched.
- (iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
- (iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
- (v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
- (vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
- (vii) In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
- (viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.
- (2) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
- (i) A requirement for factual information;
- (ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
- (iii) Stipulations as to facts with which the applicant may agree or disagree.
- (3) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
- (1) In the course of examining or treating a matter in a pending or abandoned application, in a patent, or in a reexamination proceeding, including a reexamination proceeding ordered as a result of a supplemental examination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
- (b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
- (c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136.
An examiner or other Office employee may require from individuals identified under 37 CFR 1.56(c), the submission of such information as may be reasonably necessary to properly examine or treat a matter in a pending or abandoned application filed under 35 U.S.C. 111, in a pending or abandoned application that has entered the national stage under 35 U.S.C. 371, in a patent, or in a reexamination proceeding. The scope of 37 CFR 1.105 is extended to any assignee or anyone to whom there is an obligation to assign the application because the information required may be known to some members of the assignee or obligated assignee even if not known by the inventors.
The authority for the Office to make such requirements arises from the statutory requirements of examination pursuant to 35 U.S.C. 131 and 132. An examiner or other Office employee may make a requirement for information reasonably necessary to the examination or treatment of a matter in accordance with the policies and practices set forth by the Director(s) of the Technology Center or other administrative unit to which that examiner or other Office employee reports. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1283, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) ("Star Fruits’ argument fails to come to grips with the real issue in this case, which is whether the Office can use section 1.105 to compel disclosure of information that the examiner deems pertinent to patentability when the applicant has a contrary view of the applicable law. We answer this question in the affirmative.")
704.11 What Information May Be Required [R-11.2013]
Information which may be required under 37 CFR 1.105 is that information reasonably necessary to properly examine or treat a matter in a pending or abandoned application filed under 35 U.S.C. 111 (including a reissue application), in a pending or abandoned application that has entered the national stage under 35 U.S.C. 371, in a patent, or in a reexamination proceeding.
There must be a reasonable basis for the information required that would aid in the examination of an application or treatment of some matter. A requirement for information under 37 CFR 1.105 places a substantial burden on the applicant that is to be minimized by clearly focusing the reason for the requirement and the scope of the expected response. Thus, the scope of the requirement should be narrowly defined, and a requirement under 37 CFR 1.105 may only be made when the examiner has a reasonable basis for requiring information.
The terms "factual" and "facts" are included in 37 CFR 1.105 to make it clear that it is facts and factual information, that are known to applicant, or readily obtained after reasonable inquiry by applicant, that are sought, and that requirements under 37 CFR 1.105 are not requesting opinions that may be held or would be required to be formulated by applicant. Where the factual information requested related to the subject application, and details thereof, applicant would be expected to make a reasonable inquiry under the circumstances to find the factual information requested (37 CFR 11.18(b)(2) ). Applicant need not, however, derive or independently discover a fact, such as by experimentation, in response to a requirement for information. The purpose of 37 CFR 1.105 is to improve patent quality, and render better decisions, and not to put applicants in jeopardy of meeting their duties of candor and good faith in their replies to a requirement for information.
INFORMATION REASONABLY NECESSARY FOR FINDING PRIOR ART
The criteria stated in 37 CFR 1.105 for making a requirement for information is that the information be reasonably necessary to the examination or treatment of a matter in an application. The information required would typically be that necessary for finding prior art or for resolving an issue arising from the results of the search for art or from analysis of the application file. A requirement for information necessary for finding prior art is not a substitute for the examiner performing a search of the relevant prior art; the examiner must make a search of the art according to MPEP §§ 704.01 and 904 – 904.03.
The criteria of reasonable necessity is generally met, e.g., where:
- (A) the examiner’s search and preliminary analysis demonstrates that the claimed subject matter cannot be adequately searched by class or keyword among patents and typical sources of non-patent literature, or
- (B) either the application file or the lack of relevant prior art found in the examiner’s search justifies asking the applicant if he or she has information that would be relevant to the patentability determination.
The first instance generally occurs where the invention as a whole is in a new area of technology which has no patent classification or has a class with few pieces of art that diverge substantially from the nature of the claimed subject matter. In this situation, the applicant is likely to be among the most knowledgeable in the art, as evidenced by the scarcity of art, and requiring the applicant’s information of areas of search is justified by the need for the applicant’s expertise.
The second instance generally occurs where the application file, or other related applications or publications authored by the applicant, suggests the applicant likely has access to information necessary to a more complete understanding of the invention and its context. In this situation, the record suggests that the details of such information may be relevant to the issue of patentability, and thus shows the need for information in addition to that already submitted by the applicant.
704.11(a) Examples of Information Reasonably Required [R-07.2015]
37 CFR 1.105(a)(1)(i)-(viii) list specific examples of information that may be reasonably required. Other examples, not meant to be exhaustive, of information that may be reasonably required for examination of an application include:
- (A) The name and citation of any particularly relevant indexed journal, or treatise.
- (B) The trade name of any goods or services the claimed subject matter is embodied in.
- (C) The citation for, the dates initially published and copies of any advertising and promotional literature prepared for any goods or services the claimed subject matter has been embodied in.
- (D) The citation for and copies of any journal articles describing any goods or services the claimed subject matter has been embodied in.
- (E) The trade names and providers of any goods or services in competition with the goods or services the claimed subject matter has been embodied in.
- (F) Any written descriptions or analyses, prepared by any of the inventors or assignees, of goods or services in competition with the goods or services the claimed subject matter has been embodied in.
- (G) Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee as the current application that disclose similar subject matter that are not otherwise identified in the current application. Regarding the identification of applications filed before June 8, 1995, 35 U.S.C. 122(a) requires the identified applications to be kept in confidence by the Office and no information concerning the same is to be given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director. See MPEP § 103 and Hyatt v. United States Patent and Trademark Office, No. 1:13-cv-1535 (E.D. Va., May 29, 2014) (2014 WL 2446176).
- (H) A reply to a matter raised in a protest under 37 CFR 1.291.
- (I) An explanation of technical material in a publication, such as one of the inventor’s publications.
- (J) The identification of changes made in a reformatted continuing application filed under 37 CFR 1.53(b).
- (K) A mark-up for a continuation-in-part application showing the subject matter added where there is an intervening reference.
- (L) Comments on a new decision by the Federal Circuit that appears on point.
- (M) The publication date of an undated document mentioned by applicant that may qualify as printed publication prior art (35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b) ).
- (N) Comments on information of record which raises a question of whether applicant derived the invention from another under 35 U.S.C. 101 and 115, and pre-AIA 35 U.S.C. 102(f).
- (O) Art related to applicant’s invention, applicant’s disclosure, or the claimed subject matter.
- (P) Other factual information pertinent to patentability.
- (Q) The accuracy of the examiner’s stated analysis of such items.
- (R) Clarification of the correlation and identification of what structure, material, or acts set forth in the specification would be capable of carrying out a function recited in a means or steps plus function claim limitation. If it is not apparent to the examiner where in the specification and drawings there is support for a particular claim limitation reciting a means to accomplish a function, and if an inquiry by the examiner for such support is met by a stated lack of knowledge thereof by the applicant, the examiner could very well conclude that there is no such support and make appropriate rejections under, for example, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph (written description) and 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
- (S) Interrogatories or Stipulations.
- (1) Of the common technical features shared among all claims, or admission that certain groups of claims do not share any common technical features,
- (2) About the support found in the disclosure for means or steps plus function claims (35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6),
- (3) Of precisely which portion(s) of the disclosure provide the written description and enablement support for specific claim element(s),
- (4) Of the meaning of claim limitations or terms used in the claims, such as what teachings in the prior art would be covered by particular limitations or terms in a claim and which dictionary definitions would define a particular claim term, particularly where those terms are not used per se in the specification,
- (5) Of which portions of each claim correspond to any admitted prior art in the specification,
- (6) Of the specific utility provided by the claimed subject matter on a claim-by-claim basis,
- (7) As to whether a dependent claim element is known in the prior art based on the examiner having a reasonable basis for believing so,
- (8) Of support for added limitations in an amended claim,
- (9) Of facts related to public use or sale situations.
- (T) Information from the applicant regarding a third party submission under 37 CFR 1.290. In no circumstance may an examiner direct a requirement for information to the third party that submitted the paper under 37 CFR 1.290. See MPEP § 1134.
- (U) Information from the applicant regarding rescission of a statement under 37 CFR 1.55 or 1.78. See MPEP § 704.14(a) for form paragraph 7.104.02.
704.11(b) When May a Requirement for Information Be Made [R-08.2012]
A requirement for information under 37 CFR 1.105 is discretionary. A requirement may be made at any time once the necessity for it is recognized and should be made at the earliest opportunity after the necessity is recognized. The optimum time for making a requirement is prior to or with a first action on the merits because the examiner has the maximum opportunity to consider and apply the response. Ordinarily, a request for information should not be made with or after a final rejection.
I. PRIOR TO THE FIRST ACTION ON THE MERITS
It may be appropriate to make a requirement for information prior to the first action on the merits, such as with a restriction requirement, when the examiner’s search and preliminary analysis demonstrates that the claimed subject matter cannot be adequately searched by class or keyword among patents or in areas of emerging technology where the Office has minimal prior art.
Factors to be considered for the appropriateness of a separate requirement for information prior to the first action on the merits include:
- (A) Whether the claimed subject matter is in a newly established art area without a well-developed prior art resource pool;
- (B) Whether the applicant submitted an Information Disclosure Statement;
- (C) Whether the specification’s background description adequately describes the background of the disclosed subject matter;
- (D) Whether related documents, written by an inventor or an employee of the assignee, which were not submitted, are found during the search or described in the application file;
- (E) Whether non-patent literature is referred to in the disclosure, but a copy has not been supplied; and
- (F) Whether the specification’s background of the invention describes information as being known or conventional, which may be considered as an admission of prior art, but such information is unfamiliar to examiner and cannot be found within the application file or from the examiner’s search, and further details of the information would be relevant to the question of patentability.
II. WITH THE FIRST ACTION ON THE MERITS
A requirement for information may be combined with a first action on the merits that includes at least one rejection, if, for example, either the application file or the lack of relevant prior art found in the examiner’s search justifies asking the applicant if he or she has information that would be relevant to the patentability determination.
It is not appropriate to make a requirement for information based on a lack of relevant prior art with a first action on the merits allowance or Ex parte Quayle action.
III. AFTER THE FIRST ACTION ON THE MERITS
A requirement for information made after the first action on the merits may be appropriate when the application file justifies asking the applicant if he or she has information that would be relevant to the patentability determination. It is rarely appropriate to require information because of a lack of relevant prior art after the first action on the merits.
A requirement for information is not proper when no further action would be taken by the examiner. The reasonable necessity criteria for a requirement for information implies further action by the examiner. This means that actions in which requirements for information necessary for examination are made should generally be a non-final action because the applicant’s reply must be considered and applied as appropriate.
Under limited circumstances, requirements under 37 CFR 1.105 may be made in an application that is issued or abandoned. Such a requirement would normally be made only during part of some ongoing proceeding involving the issued patent or abandoned application. Examples of proceedings when an examiner or other Office employee would issue such a request in an abandoned application include proceedings to revive the abandoned application. Examples of proceedings when an examiner or other Office employee would issue such a request in a patent include proceedings to change inventorship and reexamination proceedings.
704.12 Replies to a Requirement for Information [R-08.2012]
Replies to requirements for information must be complete and filed within the time period set including any extensions. Failure to reply within the time period set will result in the abandonment of the application. All replies for a request for information should be checked for completeness. Any incomplete reply can be completed within the original time period set including any extensions. Supplemental replies filed after the expiration of the original period for reply including any extensions of time must comply with all other rules for submissions of information.
704.12(a) Relationship of Requirement for Information to Duty of Disclosure [R-08.2012]
The duty of candor and good faith under 37 CFR 1.56 applies to the applicant’s reply to a requirement for information under 37 CFR 1.105, and requires that the applicant reply to a requirement under 37 CFR 1.105 with information reasonably and readily available.
37 CFR 1.56 requires parties identified in 37 CFR 1.56(c) to disclose to the Office information material to the patentability of the claimed subject matter. This threshold is substantially higher than that for requiring information under 37 CFR 1.105, which is reasonable necessity to the examination of the application. See, e.g., Star Fruits S.N.C. v. United States, 280 F.Supp.2d 512, 515-16 (E.D. Va 2003)("Beyond that which a patent applicant is duty-bound to disclose pursuant to 37 CFR 1.56, an examiner may require the production of ‘such information as may be reasonably necessary to properly examine or treat the matter.’")
In contrast with the applicant’s duty to disclose on his or her own initiative information material to patentability under 37 CFR 1.56, the Office has the authority to require information reasonably necessary to the examination or treatment of a matter in an application. Such information may not be considered material to patentability by applicant, hence applicant would not be required to provide the information under 37 CFR 1.56. The information is instead reasonably necessary to determine the state of the art, the context in which the invention is practiced, the directions in which the relevant art are advancing, the similarity between the claimed subject matter and other art worked on by the applicants and their assignees or to otherwise proceed in the examination and treatment of matters in an application.
Similar to 37 CFR 1.56, applicant is required by 37 CFR 1.105 to submit information already known, but there is no requirement to search for information that is unknown. Unlike 37 CFR 1.56, applicant is required by 37 CFR 1.105 to submit information that may not be material to patentability in itself, but that is necessary to obtain a complete record from which a determination of patentability may be determined.
704.12(b) What Constitutes a Complete Reply [R-08.2012]
A complete reply to a 37 CFR 1.105 requirement is a reply to each enumerated requirement for information giving either the information required or a statement that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested. There is no requirement for the applicant to show that the required information was not, in fact, readily attainable, but applicant is required to make a good faith attempt to obtain the information and to make a reasonable inquiry once the information is requested.
There is no need for applicants to distinguish between whether the required information is unknown or is not readily available. Thus, if information remains unknown after a reasonable inquiry is made, applicant may simply reply that the requested information is either unknown or is not readily available rather than be required to make a categorical position either that the information is unknown to the applicant, or that the information is not readily available to the applicant.
A reply stating that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested will generally be sufficient unless, for example, it is clear the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible.
Depending on the facts surrounding the requirement and the reply, a follow up requirement may be made where both reasonable and warranted.
704.12(c) Treatment of an Incomplete Reply [R-10.2019]
An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in the same manner as an amendment not fully responsive to a non-final Office action. See 37 CFR 1.135(c) and MPEP § 714.03. Where the reply is a bona fide reply, form paragraph 7.95 may be used. Note that a 37 CFR 1.105 requirement, even absent an action on the merits, is an Office action.
¶ 7.95 Bona Fide, Non-Responsive Amendments
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
Examiner Note:
This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.
704.13 Time Periods for Reply [R-08.2012]
A reply, or a failure to reply, to a requirement for information under 37 CFR 1.105 will be governed by 37 CFR 1.135 and 1.136. See MPEP § 710 et seq.
Requirements for information under 37 CFR 1.105 made without an action on the merits should set a shortened statutory period of two months for reply. Applicant may extend the time period for reply up to six months in accordance with 37 CFR 1.136(a).
Requirements sent with an Office action on the merits, and not as a separate Office action, will be given the same period for reply as the action on the merits.
A requirement for information under 37 CFR 1.105 is an Office action under 35 U.S.C. 132 for patent term adjustment purposes. See MPEP § 2730 for information pertaining to patent term adjustment.
704.14 Making a Requirement for Information [R-08.2012]
A requirement for information under 37 CFR 1.105 should be narrowly specified and limited in scope. It is a significant burden on both the applicant and the Office since the applicant must collect and submit the required information and the examiner must consider all the information that is submitted. A requirement for information is only warranted where the benefit from the information exceeds the burden in obtaining information.
704.14(a) Format of the Requirement [R-10.2019]
The requirement must clearly indicate that a requirement under 37 CFR 1.105 is being made, the basis for the requirement, and what information is being required. Requirements should specify the particular art area involved, and the particular claimed subject matter within such art area, in which the information is required in order to avoid overly burdening the applicant and to avoid inviting large volumes of information that are not relevant to the need for the information. The requirement should also clearly indicate the form the required information is expected to take. That is, whether the requirement is for citations and copies of individual art references, for the identification of whole collections of art, for answers to questions, or for another specified form.
A requirement for information under 37 CFR 1.105 is generally prepared as a separate document that may be attached to an Office action on the merits or mailed as a stand alone action. The rule permits a requirement to be included within an Office action, but creating a separate document is preferable because the existence of the requirement is immediately brought to the attention of the recipient and it is more readily routed by the applicant to the parties best able to respond.
The requirement should state why the requirement has been made and how the information is necessary to the examination.
Interrogatories may be used to ask specific questions seeking applicant’s factual knowledge. Such a requirement for information may include an inquiry as to the existence of a particular document or other piece of information and a requirement that such information be supplied if it is known to exist and is readily available. A stipulation may be used as to facts with which applicant may agree or disagree in order to clarify the record about uncontroverted matters.
FORM PARAGRAPHS
The following form paragraphs should be used when preparing a requirement for information:
¶ 7.104.02 Requirement for Information, Rescission of Statement Under 37 CFR 1.55 or 1.78
Applicant submitted a rescission of the prior-filed 1.55 /1.78 statement which indicated that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013. In order for the examiner to properly consider patentability of the claimed invention, additional information regarding this issue is required as follows: [1]
Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This form paragraph should only be used in an application filed on or after March 16, 2013, where the applicant rescinded a statement pursuant to 37 CFR 1.55 or 1.78 and clarification on the reasoning why pre-AIA law applies is needed.
3. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability.
4. In bracket 1, insert the information that is sought from the applicant.
5. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having a shortened statutory period (SSP), in which case the period for reply will apply also to the requirement.
¶ 7.105 Requirement for Information, Heading
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
Examiner Note:
1. This form paragraph should appear at the beginning of any requirement for information under 37 CFR 1.105, and should be followed by an explanation of why the required information is necessary for examination. Form paragraph 7.104.aia, 7.104.fti, 7.104.02 or 7.106 – 7.121 may be used as appropriate.
2. The requirement for information should conclude with form paragraphs 7.122 – 7.126 as appropriate.
The following form paragraphs should be used as appropriate where the information required pertains to stipulations of facts or interrogatories of facts known to the applicant:
¶ 7.105.01 Stipulations of Facts Known to Applicant
In response to this requirement, please agree or disagree to the stipulation of each of the following assertions of facts:
[1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 –7.126 as appropriate.
2. In bracket 1, specify each factual assertion, in the form of a separate, numbered sentence, that the applicant is to either agree or disagree to so stipulate. It is suggested that at the end of each assertion, the parenthetical phrase "(agree/disagree)" be appended to facilitate a reply by way of applicant marking up a copy of the requested stipulations.
¶ 7.105.02 Interrogatories of Facts Known to Applicant
In response to this requirement, please provide answers to each of the following interrogatories eliciting factual information:
[1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 –7.126 as appropriate.
2. In bracket 1, specify each interrogatory question, in the form of a separate, numbered sentence, that the applicant is to answer. The scope of each query must be clearly set forth and the content of the expected reply is to be characterized as factual information.
The following form paragraphs should be used as appropriate where the information required pertains to a search for prior art, or to citations and/or copies of publications:
¶ 7.106 Domain of Search
The information is required to extend the domain of search for prior art. Limited amounts of art related to the claimed subject matter are available within the Office, and are generally found in class [1] and subclasses [2], which describe [3]. A broader range of art to search is necessary to establish the level of knowledge of those of ordinary skill in the claimed subject matter art of [4].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 4, insert a description of the art claimed but not found in the classification system.
¶ 7.109 Products and Services Embodying Invention
The information is required to identify products and services embodying the disclosed subject matter of [1] and identify the properties of similar products and services found in the prior art.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.110 Art Suggested as Relevant
The information is required to enter in the record the art suggested by the applicant as relevant to this examination in [1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 1, describe where in the application file applicant suggests that the art is relevant, e.g., the specification and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page thereof.
¶ 7.111 List of Keywords
In response to this requirement, please provide a list of keywords that are particularly helpful in locating publications related to the disclosed art of [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.112 Citations for Electronically Searchable Databases or Other Indexed Collections
In response to this requirement, please provide a list of citations to electronically searchable databases or other indexed collections containing publications that document the knowledge within the disclosed art of [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.113 Copy of Art Referred to in the Disclosure, But Not Submitted
In response to this requirement, please provide a copy of each of the following items of art referred to in the [1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 1, describe where in the application file applicant refers to art that has not been previously submitted, e.g., the specification and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page thereof.
¶ 7.114 Copies of Publications Authored by Inventor(s)
In response to this requirement, please provide copies of each publication which any of the applicants authored or co-authored and which describe the disclosed subject matter of [1].
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.115 Art Relied Upon for Description of Prior Art
In response to this requirement, please provide the title, citation and copy of each publication that is a source used for the description of the prior art in the disclosure. For each publication, please provide a concise explanation of that publication’s contribution to the description of the prior art.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.
¶ 7.116 Art Relied Upon for Development of Invention
In response to this requirement, please provide the title, citation and copy of each publication that any of the applicants relied upon to develop the disclosed subject matter that describes the applicant’s invention, particularly as to developing [1]. For each publication, please provide a concise explanation of the reliance placed on that publication in the development of the disclosed subject matter.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.
3. In bracket 1, insert a description of the most important inventive elements.
¶ 7.117 Art Relied Upon for Drafting Claimed Subject Matter
In response to this requirement, please provide the title, citation and copy of each publication that was relied upon to draft the claimed subject matter. For each publication, please provide a concise explanation of the reliance placed on that publication in distinguishing the claimed subject matter from the prior art.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.
¶ 7.118 Results of Applicant’s Prior Art Search
In response to this requirement, please state whether any search of prior art was performed. If a search was performed, please state the citation for each prior art collection searched. If any art retrieved from the search was considered material to demonstrating the knowledge of a person having ordinary skill in the art to the disclosed [1], please provide the citation for each piece of art considered and a copy of the art.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 1, describe the subject matter for which art is required.
¶ 7.119 Names of Products or Services Incorporating Claimed Invention
In response to this requirement, please provide the names of any products or services that have incorporated the claimed subject matter.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
¶ 7.120 Names of Products or Services Incorporating Disclosed Prior Art
In response to this requirement, please provide the names of any products or services that have incorporated the disclosed prior art [1].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. In bracket 1, specify the attributes of the prior art that most closely approximate the claimed subject matter to narrow the focus of the reply.
¶ 7.121 Details of Improvement Over the Prior Art
In response to this requirement, please state the specific improvements of the subject matter in claims [1] over the disclosed prior art and indicate the specific elements in the claimed subject matter that provide those improvements. For those claims expressed as means or steps plus function, please provide the specific page and line numbers within the disclosure which describe the claimed structure and acts.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
The following form paragraphs should appear at the end of the requirement for information, as appropriate:
¶ 7.122 Submission of Only Pertinent Pages Where Document is Large
In responding to those requirements that require copies of documents, where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter indicated in the requirement, or where such subject matter is not indicated, the subject matter found in applicant’s disclosure.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. Use this form paragraph where the scope of the requirement for information specifically includes copies of publications.
¶ 7.123 Waiver of Fee and Statement Requirements for Certain Information Disclosures
The fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to this requirement. This waiver extends only to those documents within the scope of the requirement under 37 CFR 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97 where appropriate.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraph 7.124 and either form paragraph 7.125 or 7.126 as appropriate.
2. Use this form paragraph where the scope of the requirement for information specifically includes citations to and/or copies of publications.
¶ 7.124 Contents of Good Faith Reply
The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56. Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraph 7.125 or 7.126 as appropriate.
2. This form paragraph should appear in the conclusion of any requirement for information.
¶ 7.125 Conclusion of Requirement That Accompanies Office Action
This requirement is an attachment of the enclosed Office action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information that accompanies an Office action. If the requirement for information is mailed without any other Office action, use form paragraph 7.126 instead.
2. Form paragraph 7.127 should appear at the end of any Office action that includes an attached requirement for information.
¶ 7.126 Conclusion Of Requirement Mailed Without Any Other Office Action
This requirement is subject to the provisions of 37 CFR 1.134, 1.135 and 1.136 and has a shortened statutory period of [1] months. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information mailed without any other Office action. If the requirement for information is mailed with an Office action, use form paragraph 7.125 instead.
2. The period for reply is ordinarily set for TWO (2) MONTHS.
¶ 7.127 Conclusion of Office Action That Includes Requirement
This Office action has an attached requirement for information under 37 CFR 1.105. A complete reply to this Office action must include a complete reply to the attached requirement for information. The time period for reply to the attached requirement coincides with the time period for reply to this Office action.
Examiner Note:
This form paragraph should appear at the end of any Office action that includes an attached requirement for information.
704.14(b) Examiner’s Obligation Following Applicant’s Reply [R-08.2017]
The examiner must consider the information submitted with the applicant’s reply and apply the information as the examiner deems appropriate. This obligation arises from the examiner’s assertion that the information is necessary to the examination in making the requirement.
Information constituting identification of areas of search must be considered and the examiner must indicate which areas were used and which areas were not used in performing a search.
The examiner must record in the appropriate sections of the "Search Notes" form the areas in which the search for prior art was made. See MPEP § 719.05. Information constituting answers to queries posed by the examiner or another Office employee must be considered, and the record must indicate that the answers were considered. This indication may be made minimally by indicating "Considered" with the Stamper tool in Adobe Acrobat and including the receipt date on the reply.
Art that is submitted in response to a 37 CFR 1.105 requirement must be considered, at least to the extent that art submitted with an Information Disclosure Statement under 37 CFR 1.97 and 1.98 is considered. See MPEP § 609. If the applicant provides a written list of citations for the art submitted with a reply to a 37 CFR 1.105 requirement, an examiner must indicate on that list which art has been considered and which art has not been considered, in the same manner as with an Information Disclosure Statement under 37 CFR 1.97 and 1.98. The examiner may annotate the list by using Adobe Acrobat to stamp the document with "All References Considered" while also providing the receipt date, application number and art unit. If the applicant provides no such list, there is no requirement for the examiner to prepare such a list or otherwise make the submitted art of record unless the examiner relies on such art in a rejection.
It is never appropriate to deny considering information that is submitted in reply to, and is within the scope of, a requirement under 37 CFR 1.105. However, information that is beyond the scope of a 37 CFR 1.105 requirement, submitted along with information responding to a requirement under 37 CFR 1.105, need not be considered unless the submission of such art conforms to the provisions of 37 CFR 1.97 and 1.98, and MPEP § 609. The criteria for measuring the scope of a 37 CFR 1.105 requirement is the plain meaning of the text of the requirement. For this reason, it is essential that the scope of information required be carefully specified. If art which is beyond the scope of a 37 CFR 1.105 requirement is submitted in accordance with the provisions of 37 CFR 1.97 and 1.98, and MPEP § 609, such art must be considered according to the provisions of 37 CFR 1.97 and 37 CFR 1.98.
704.14(c) Petitions to Requirements Under 37 CFR 1.105 [R-08.2012]
Applicants who seek to have a requirement under 37 CFR 1.105 withdrawn or modified, or who seek to have information submitted under 37 CFR 1.105 considered, may submit a petition under 37 CFR 1.181 to the Director of the Technology Center in which the requirement was issued. However, a petition is not a reply to a 37 CFR 1.105 requirement. The time period for the applicant to reply to the 37 CFR 1.105 requirement continues to run, even where a petition has been submitted.
704.14(d) Relationship to Information Disclosure Statements [R-08.2012]
The initial reply, if responsive to the requirement for information under 37 CFR 1.105 and submitted within the original time period for reply including any extensions of time, does not have to satisfy the fee and/or certification requirements of 37 CFR 1.97 and 1.98. Applicant should list the references on a copy of Form PTO/SB/08 to have the citations entered in the record. Any replies made subsequent to the initial reply must meet the provisions of 37 CFR 1.97 and 1.98 as appropriate.
Any submission of art beyond the scope of a requirement for information under 37 CFR 1.105 is a submission of art under 37 CFR 1.97 and 1.98 and MPEP § 609, and must meet the provisions of 37 CFR 1.97 and 1.98 for the art to be considered.
Where information is submitted in a reply to a requirement under 37 CFR 1.105, the examiner may NOT make the next Office action relying on that art final unless all instances of the application of such art are necessitated by amendment. This section explicitly distinguishes the practice following a reply under 37 CFR 1.105 from the practice in MPEP § 609.04(b) and MPEP § 706.07(a) following a submission of an Information Disclosure Statement under 37 CFR 1.97 and 1.98.
705 Patentability Reports [R-08.2012]
Where an application, properly assigned to one Technology Center (TC), is found to contain one or more claims, per se, classifiable in one or more other TCs, which claims are not divisible inter se or from the claims which govern classification of the application in the first TC, the application may be referred to the other TC(s) concerned for a report as to the patentability of certain designated claims. This report is known as a Patentability Report (P.R.) and is signed by the primary examiner in the reporting TC.
Note that the Patentability Report practice is only to be used in extraordinary circumstances. See MPEP § 705.01(e).
705.01 Instructions re Patentability Reports [R-07.2015]
When an application comes up for any action and the primary examiners involved (i.e., from both the requesting and the requested Technology Center (TC)) agree that a Patentability Report from the requested TC is necessary for some of the claims, and if the TC Director of the requesting TC approves, the application is forwarded to the requested TC with a request for the Patentability Report.
705.01(a) Nature of P.R., Its Use and Disposal [R-08.2017]
The primary examiner in the Technology Center (TC) from which the Patentability Report is requested, if he or she approves the request, will direct the preparation of the Patentability Report. This Patentability Report is in memorandum form and will include the citation of all pertinent references and a complete action on all claims involved. The field of search covered must be recorded in the appropriate section of the "Search Notes" form. See MPEP § 719.05. When an examiner to whom an application has been forwarded for a Patentability Report is of the opinion that final action is in order as to the referred claims, he or she should so state. The Patentability Report when signed by the primary examiner in the reporting TC will be returned to the TC to which the application is regularly assigned and placed in the file wrapper.
The examiner preparing the Patentability Report will be entitled to receive an explanation of the disclosure from the examiner to whom the case is assigned to avoid duplication of work.
If the primary examiner in a reporting TC is of the opinion that a Patentability Report is not in order, he or she should so advise the primary examiner in the forwarding TC.
I. DISAGREEMENT AS TO CLASSIFICATION
Conflict of opinion as to classification may be referred to a classification dispute TC representative panel for decision.
If the primary examiner in the TC having jurisdiction of the application agrees with the Patentability Report, he or she should incorporate the substance thereof in his or her action, which action will be complete as to all claims.
II. DISAGREEMENT ON PATENTABILITY REPORT
If the primary examiner does not agree with the Patentability Report or any portion thereof, he or she may consult with the primary examiner responsible for the report. If agreement as to the resulting action cannot be reached, the primary examiner having jurisdiction of the application need not rely on the Patentability Report but may make his or her own action on the referred claims, in which case the Patentability Report should be removed from the file.
III. APPEAL TAKEN
When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC for the purpose of appeal. The receiving TC will take jurisdiction of the application and prepare the examiner’s answer. If allowed, the application may be sent to issue by said TC with its classification determined by the controlling claims remaining in the application.
705.01(b) Sequence of Examination [R-08.2012]
In the event that the supervisory patent examiners concerned in a P.R. case cannot agree as to the order of examination by their Technology Centers (TCs), the supervisory patent examiner having jurisdiction of the application will direct that a complete search be made of the art relevant to his or her claims prior to referring the application to another TC for report. The TC to which the application is referred will be advised of the results of this search.
If the supervisory patent examiners are of the opinion that a different sequence of search is expedient, the order of search should be correspondingly modified.
705.01(c) Counting and Recording P.R.s [R-08.2012]
The forwarding of the application for a Patentability Report is not to be treated as a transfer by the forwarding Technology Center (TC). When the P.R. is completed and the application is ready for return to the forwarding TC, it is not counted either as a receipt or action by transfer. Credit, however, is given for the time spent.
The date status of the application in the reporting TC will be determined on the basis of the dates in the TC of original jurisdiction. To ensure orderly progress in the reported dates, a timely reminder should be furnished to the TC making the P.R.
705.01(d) [Reserved]
705.01(e) Limitation as to Use [R-07.2015]
The above outlined Patentability Report practice is not obligatory and should be resorted to only where it will save total examiner time or result in improved quality of action due to specialized knowledge. A saving of total examiner time that is required to give a complete examination of an application is of primary importance. Patentability Report practice is based on the proposition that when plural, indivisible inventions are claimed, in some instances either less time is required for examination, or the results are of better quality, when specialists on each character of the claimed invention treat the claims directed to their specialty. However, in many instances a single examiner can give a complete examination of as good quality on all claims, and in less total examiner time than would be consumed by the use of the Patentability Report practice.
Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper.
Exemplary situation where Patentability Reports are ordinarily not proper are as follows:
- (A) Where the claims are related as a manufacturing process and a product defined by the process of manufacture. The examiner having jurisdiction of the process can usually give a complete, adequate examination in less total examiner time than would be consumed by the use of a Patentability Report.
- (B) Where the claims are related as product and a process which involves merely the fact that a product having certain characteristics is made. The examiner having jurisdiction of the product can usually make a complete and adequate examination.
- (C) Where the claims are related as a combination distinguished solely by the characteristics of a subcombination and such subcombination, per se. The examiner having jurisdiction of the subcombination can usually make a complete and adequate examination.
Where it can be shown that a Patentability Report will save total examiner time, one is permitted with the approval of the Director of the Technology Center to which the application is assigned. The "Approved" stamp should be impressed on the memorandum requesting the Patentability Report.
705.01(f) Interviews With Applicants [R-08.2012]
In situations where an interview is held on an application in which a Patentability Report has been adopted, the reporting Technology Center may be called on for assistance at the interview when it concerns claims treated by them. See MPEP § 713 to § 713.10 regarding interviews in general.
706 Rejection of Claims [R-07.2015]
After the application has been read and the claimed invention understood, a prior art search for the claimed invention is made. With the results of the prior art search, including any references provided by the applicant, the patent application should be reviewed and analyzed in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity. The examiner then reviews all the evidence, including arguments and evidence responsive to any rejection, before issuing the next Office action. Where the examiner determines that information reasonably necessary for the examination should be required from the applicant under 37 CFR 1.105, such a requirement should generally be made either prior to or with the first Office action on the merits and should follow the procedures in MPEP § 704.10 et seq.
Although this part of the Manual explains the procedure in rejecting claims, the examiner should never overlook the importance of his or her role in allowing claims which properly define the invention.
37 C.F.R. 1.104 Nature of examination.
*****
- (c) Rejection of claims.
- (1) If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected.
- (2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.
- (3) In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section.
- (4)
- (i) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
- (ii) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if:
- (A) The applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
- (B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
- (5)
- (i) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application filed on or after November 29, 1999, or any patent issuing thereon, in an application filed before November 29, 1999, but pending on December 10, 2004, or any patent issuing thereon, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, at the time the claimed invention was made, were owned by the same person or subject to an obligation of assignment to the same person.
- (ii) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application pending on or after December 10, 2004, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect prior to March 16, 2013, if:
- (A) The applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention were made by or on behalf of the parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
- (B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
- (6) Patents issued prior to December 10, 2004, from applications filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on November 28, 1999.
*****
I. UNIFORM APPLICATION OF THE PATENTABILITY STANDARD
The standards of patentability applied in the examination of claims must be the same throughout the Office. In every art, whether it be considered "complex," "newly developed," "crowded," or "competitive," all of the requirements for patentability (e.g., patent eligible, useful, novel, nonobvious, enabled, and clearly described as provided in 35 U.S.C. 101, 102, 103 and 112 ) must be met before a claim is allowed. The mere fact that a claim recites in detail all of the features of an invention (i.e., is a "picture" claim) is never, in itself, justification for the allowance of such a claim.
An application should not be allowed, unless and until issues pertinent to patentability have been raised and resolved in the course of examination and prosecution, since otherwise the resultant patent would not justify the statutory presumption of validity (35 U.S.C. 282 ), nor would it "strictly adhere" to the requirements laid down by Congress in the 1952 Act as interpreted by the Supreme Court. The standard to be applied in all cases is the "preponderance of the evidence" test. In other words, an examiner should reject a claim if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable.
II. DEFECTS IN FORM OR OMISSION OF A LIMITATION; CLAIMS OTHERWISE ALLOWABLE
When an application discloses patentable subject matter and it is apparent from the claims and the applicant’s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and when possible should offer a definite suggestion for correction.
III. PATENTABLE SUBJECT MATTER DISCLOSED BUT NOT CLAIMED
If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, he or she may note in the Office action that certain aspects or features of the patentable invention have not been claimed and that if properly claimed such claims may be given favorable consideration.
IV. RECONSIDERATION OF CLAIMS AFTER REPLY BY APPLICANT
37 C.F.R. 1.112 Reconsideration before final action.
After reply by applicant or patent owner (§ 1.111 or § 1.945 ) to a non-final action and any comments by an inter partes reexamination requester (§ 1.947 ), the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104 ). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945, with or without amendment, unless such Office action indicates that it is made final (§ 1.113 ) or an appeal (§ 41.31 of this title) has been taken (§ 1.116 ), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949 ) or a right of appeal notice (§ 1.953 ).
37 CFR 1.112 provides for the reconsideration and continued examination of an application after reply by the applicant, and for the reconsideration and continued examination of a reexamination proceeding after a response by the patent owner. If claims are rejected, or objections or requirements are made, the applicant or patent owner will be notified in the same manner as notification was provided after the first examination. Applicant or patent owner may reply to such Office action (with or without amendment) in the same manner provided in 37 CFR 1.111, or 37 CFR 1.945 for an inter partes reexamination, unless such Office action indicates that it is made final (37 CFR 1.113 ), or an appeal under 37 CFR 41.31 has been taken (37 CFR 1.116 ), or such Office action indicates in an inter partes reexamination that it is an action closing prosecution (37 CFR 1.949 ) or a right of appeal notice (37 CFR 1.953 ). Once an appeal has been taken in an application or in an ex parte reexamination proceeding, any amendment (filed prior to an appeal brief) is subject to the provisions of 37 CFR 1.116(b) and (c), even if the appeal is in reply to a non-final Office action. See 37 CFR 41.33(b) for amendments filed with or after the filing of an appeal brief.
V. REJECTIONS IN STATUTORY INVENTION REGISTRATIONS
See MPEP Chapter 1100 for rejection of claims in an application for a Statutory Invention Registration.
706.01 Contrasted With Objections [R-11.2013]
The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a "rejection." The term "rejected" must be applied to such claims in the examiner’s action. If the form of the claim (as distinguished from its substance) is improper, an "objection" is made. An example of a matter of form as to which objection is made is dependency of a claim on a rejected claim, if the dependent claim is otherwise allowable. See MPEP § 608.01(n). The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board, while an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO.
Similarly, the Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board. These formal matters should not be combined in appeals to the Board.
706.02 Rejection on Prior Art [R-10.2019]
[Editor Note: Information pertaining to the choice of best art, reliance on abstracts and foreign language documents, and the distinction between 35 U.S.C. 102 and 103 has been moved to MPEP § 2120. Information pertaining to determining the effective filing date of a claimed invention has been moved to MPEP § 2139.01 for applications subject to pre-AIA 35 U.S.C. 102 and MPEP § 2152.01 for applications subject to AIA 35 U.S.C. 102. Information pertaining to the rejection of claims corresponding to patent claims has been moved to MPEP § 706.06.]
By far the most frequent ground of rejection is on the ground of unpatentability in view of the prior art, that is, that the claimed subject matter is either not novel under 35 U.S.C. 102, or else it is obvious under 35 U.S.C. 103. The language to be used in rejecting claims should be unequivocal. See MPEP § 707.07(d).
For general information on rejections based on prior art, see MPEP § 2120 et seq. For information specific to rejections based on pre-AIA 35 U.S.C. 102, see MPEP §§ 2132 - 2139.03. For information specific to rejections under AIA 35 U.S.C. 102, see MPEP §§ 2151 -2156.
706.02(a) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under 35 U.S.C. 102(a)(1) or (a)(2) and pre-AIA 35 U.S.C. 102(a), (b), or (e) based on a printed publication or patent has been moved to MPEP § 2120.01.]
706.02(a)(1) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to determining whether to apply 35 U.S.C. 102(a)(1) or 102(a)(2) has been moved to MPEP § 2152.05.]
706.02(a)(2) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to whether to apply pre-AIA 35 U.S.C.102(a), (b), or (e) has been moved to MPEP § 2139.02.]
706.02(b) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to overcoming a 35 U.S.C. 102 rejection based on a printed publication or patent has been moved to MPEP § 2120.01.]
706.02(b)(1) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection based on a printed publication or patent has been moved to MPEP § 2152.06.]
706.02(b)(2) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to overcoming a rejection based on a printed publication or patent has been moved to MPEP § 2132.01 for rejections under pre-AIA 35 U.S.C. 102(a), MPEP § 2133.02(a) for rejections under pre-AIA 35 U.S.C. 102(b), and MPEP §§ 2136.05 - 2136.05(b) for rejections under pre-AIA 35 U.S.C. 102(e).]
706.02(c) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) or (b) based on knowledge by others or public use or sale has been moved to MPEP § 2120.02.]
706.02(c)(1) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under 35 U.S.C. 102(a)(1) based on public use has been moved to MPEP § 2152.02(c), and information pertaining to rejections under 35 U.S.C. 102(a)(1) based on sales or offers for sale has been moved to MPEP § 2152.02(d).]
706.02(c)(2) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to whether to make a rejection under pre-AIA 35 U.S.C. 102(a) or (b) when the claimed invention was known, in public use, or on sale, has been moved to MPEP § 2139.02. For additional information relating to such rejections see MPEP § 2132 for a discussion of rejections under pre-AIA 35 U.S.C. 102(a) and MPEP § 2133.03 et seq. for a discussion of case law treating the "public use" and "on sale" statutory bars of pre-AIA 35 U.S.C. 102(b).]
706.02(d) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(c) has been moved to MPEP § 2134.]
706.02(e) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(d) has been moved to MPEP § 2135.]
706.02(f) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(e) has been moved to MPEP § 2136.]
706.02(f)(1) [Reserved] [R-10.2019]
[Editor Note: Examination guidelines for applying references under pre-AIA 35 U.S.C. 102(e) have been moved to MPEP § 2136.]
706.02(f)(2) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to provisional rejections based on a copending U.S. application has been moved to MPEP § 2154.01(d) for rejections under AIA 35 U.S.C. 102(a)(2) and to MPEP § 2136.01 for rejections under pre-AIA 35 U.S.C. 102(e).]
706.02(g) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(f) has been moved to MPEP § 2137.]
706.02(h) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(g) has been moved to MPEP § 2138.]
706.02(i) [Reserved] [R-10.2019]
[Editor Note: Form paragraphs for use in rejections under AIA 35 U.S.C. 102 have been moved to MPEP § 2152.07, and form paragraphs for use in rejections under pre-AIA 35 U.S.C. 102 have been moved to MPEP § 2139.03.]
706.02(j) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to the contents of a 35 U.S.C. 103 rejection has been moved to MPEP § 2142.]
706.02(k) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to provisional obviousness rejections using provisional prior art under pre-AIA 35 U.S.C. 102(e) has been moved to MPEP § 2146.03(a), and information pertaining to the requirements to claim the benefit of a prior filed application under 35 U.S.C. 120 has been moved to MPEP § 2109, subsection VI.]
706.02(l) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to the applicability of pre-AIA 35 U.S.C. 103(c) to obviousness rejections using prior art under only pre-AIA 35 U.S.C. 102(e), (f), or (g) has been moved to MPEP § 2146.]
706.02(l)(1) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to prior art disqualification under pre-AIA 35 U.S.C. 103(c) has been moved to MPEP § 2146.01.]
706.02(l)(2) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to establishing common ownership or joint research agreement under pre-AIA 35 U.S.C. 103(c) has been moved to MPEP § 2146.02.]
706.02(l)(3) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to examination procedure with respect to pre-AIA 35 U.S.C. 103(c) has been moved to MPEP § 2146.03.]
706.02(m) [Reserved] [R-10.2019]
[Editor Note: Form paragraphs for making rejections under pre-AIA 35 U.S.C. 103(a) have been moved to MPEP § 2148 and form paragraphs for making rejections under AIA 35 U.S.C. 103 have been moved to MPEP § 2158.01. In addition, form paragraph 7.06.01 has been moved to MPEP § 2124.01.]
706.02(n) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to biotechnology process applications and pre-AIA 35 U.S.C. 103(b) has been moved to MPEP § 2147.]
706.03 Rejections Not Based on Prior Art [R-10.2019]
Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved. Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion.
Rejections based on nonstatutory subject matter are explained in MPEP §§ 2105 and 2106 - 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 - 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 - 2174 and 2185.
706.03(a) [Reserved] [R-10.2019]
[Editor Note: The overview of the requirements of 35 U.S.C. 101 has been moved to MPEP § 2104. Form paragraphs for use in rejections based on lack of subject matter eligibility have been moved to MPEP § 2106.07(a)(1), the form paragraph for use in rejecting a claim as being directed to a human organism has been moved to MPEP § 2105, form paragraphs for use in rejections based on lack of utility have been moved to MPEP § 2107.02, subsection IV, and form paragraphs for use in rejecting claims based on improper inventorship in applications subject to AIA 35 U.S.C. 102 have been moved to MPEP § 2157.]
706.03(b) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to patents barred by the Atomic Energy Act has been moved to MPEP § 2104.01.]
706.03(c) [Reserved] [R-10.2019]
[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, have been moved to MPEP § 2166.]
706.03(d) [Reserved] [R-10.2019]
[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, have been moved to MPEP § 2175.]
706.03(e) [Reserved] [R-10.2019]
[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, have been moved to MPEP § 2187.]
706.03(f) - 706.03(j) [Reserved]
706.03(k) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to duplicate claims has been moved to MPEP § 608.01(m).]
706.03(l) - 706.03(n) [Reserved]
706.03(o) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to objection to an amendment that adds new matter to the specification has been moved to MPEP § 608.04(a).]
706.03(p) - 706.03(r) [Reserved]
706.03(s) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to foreign filing without a foreign filing license has been moved to MPEP § 140, subsection III.]
706.03(t) [Reserved]
706.03(u) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections based on disclaimer has been moved to MPEP § 2304.04(c).]
706.03(v) [Reserved] [R-10.2019]
[Editor Note: For rejections following an interference, see MPEP Chapter 2300. Effective September 16, 2012, former 37 CFR. 1.292 authorizing petitions seeking institution of public use proceedings was removed from title 37. For information regarding rejections after the institution of public use proceedings, see MPEP § 706.03(v) of the August 2012 revision of the MPEP available from www.uspto.gov/web/offices/pac/mpep/old/ mpep_E8R9.htm.]
706.03(w) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections based on res judicata has been moved to MPEP § 2190, subsection II.]
706.03(x) [Reserved] [R-10.2019]
[Editor Note: The examination of reissue applications is covered in MPEP Chapter 1400. See especially MPEP § 1412.03 for rejection of improperly broadened reissue claims, MPEP § 1444 for rejection of claims as being based on a defective reissue oath or declaration, and MPEP § 1442 for the special status of reissue applications.]
706.03(y) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to improper Markush groupings has been moved to MPEP § 2117.]
706.04 Rejection of Previously Allowed Claims [R-11.2013]
A claim noted as allowable may be rejected only after a primary examiner has considered all the facts. An Office action rejecting a previously allowed claim must be signed by a primary examiner. See MPEP § 1004.
Great care should be exercised in making such a rejection.
PREVIOUS ACTION BY DIFFERENT EXAMINER
Full faith and credit should be given to the search and action of a previous examiner unless there is a clear error in the previous action or knowledge of other prior art. In general, an examiner should not take an entirely new approach or attempt to reorient the point of view of a previous examiner, or make a new search in the mere hope of finding something. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 126 F. Supp. 2d 69, 139, 57 USPQ2d 1449, 1499-50 (D. Mass. 2001).
Because it is unusual to reject a previously allowed claim, the examiner should point out in his or her office action that the claim now being rejected was previously allowed by using Form Paragraph 7.50.
¶ 7.50 Claims Previously Allowed, Now Rejected, New Art
The indicated allowability of claim [1] is withdrawn in view of the newly discovered reference(s) to [2]. Rejection(s) based on the newly cited reference(s) follow.
Examiner Note:
1. In bracket 2, insert the name(s) of the newly discovered reference.
2. Any action including this form paragraph requires the signature of a Primary Examiner. MPEP § 1004.
706.05 Rejection After Allowance of Application [R-08.2012]
See MPEP § 1308.01 for a rejection based on a reference after allowance.
706.06 Rejection of Claims Copied From Patent [R-10.2019]
When claims corresponding to claims of a patent are presented in an application, the examiner must determine whether the presented claims are unpatentable on any ground(s), e.g., under 35 U.S.C. 101, 102, 103, 112, double patenting, etc. If any of the claims presented in the application are rejectable on any grounds, they should be so rejected. The ground of rejection of the claims presented in the application may or may not be one which would also be applicable to the corresponding claims in the patent. If the ground of rejection is also applicable to the corresponding claims in the patent, any Office action including the rejection must have the approval of the Technology Center Director. See MPEP § 1003. For interferences and derivation proceedings, see MPEP Chapter 2300 and 37 CFR Parts 41 and 42.
706.07 Final Rejection [R-11.2013]
37 C.F.R. 1.113 Final rejection or action.
- (a) On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant’s, or for ex parte reexaminations filed under § 1.510, patent owner’s reply is limited to appeal in the case of rejection of any claim (§ 41.31 of this title), or to amendment as specified in § 1.114 or § 1.116. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim (§ 1.181 ). Reply to a final rejection or action must comply with § 1.114 or paragraph (c) of this section. For final actions in an inter partes reexamination filed under § 1.913, see § 1.953.
- (b) In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof.
- (c) Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form.
Before final rejection is in order a clear issue should be developed between the examiner and applicant. To bring the prosecution to as speedy conclusion as possible and at the same time to deal justly by both the applicant and the public, the invention as disclosed and claimed should be thoroughly searched in the first action and the references fully applied; and in reply to this action the applicant should amend with a view to avoiding all the grounds of rejection and objection. Switching from one subject matter to another in the claims presented by applicant in successive amendments, or from one set of references to another by the examiner in rejecting in successive actions claims of substantially the same subject matter, will alike tend to defeat attaining the goal of reaching a clearly defined issue for an early termination, i.e., either an allowance of the application or a final rejection.
While applicant does not have the right to amend as often as the examiner presents new references or reasons for rejection, examiners should not make hasty and ill-considered final rejections. The applicant who is seeking to define his or her invention in claims that will give him or her the patent protection to which he or she is justly entitled should receive the cooperation of the examiner to that end, and not be prematurely cut off in the prosecution of his or her application.
The examiner should never lose sight of the fact that in every case the applicant is entitled to a full and fair hearing, and that a clear issue between applicant and examiner should be developed, if possible, before appeal. However, it is to the interest of the applicants as a class as well as to that of the public that prosecution of an application be confined to as few actions as is consistent with a thorough consideration of its merits.
STATEMENT OF GROUNDS
In making the final rejection, all outstanding grounds of rejection of record should be carefully reviewed, and any such grounds relied on in the final rejection should be reiterated. They must also be clearly developed to such an extent that applicant may readily judge the advisability of an appeal unless a single previous Office action contains a complete statement supporting the rejection.
However, where a single previous Office action contains a complete statement of a ground of rejection, the final rejection may refer to such a statement and also should include a rebuttal of any arguments raised in the applicant’s reply. If appeal is taken in such a case, the examiner’s answer should contain a complete statement of the examiner’s position. The final rejection letter should conclude with Form Paragraph 7.39.
¶ 7.39 Action Is Final
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).
2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
Form paragraph 7.39.01 may be used to notify applicant of options available after final rejection.
¶ 7.39.01 Final Rejection, Options for Applicant, Pro Se
This action is a final rejection and is intended to close the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee of $[1].
If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing a good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b), the application will become abandoned.
Examiner Note:
The form paragraph must be preceded by any one of form paragraphs 7.39, 7.40, 7.40.01, 7.41, 7.42.03.fti, or 7.42.09.
The Office Action Summary Form PTOL-326 should be used in all Office actions up to and including final rejections.
For amendments filed after final rejection, see MPEP § 714.12 and § 714.13.
For final rejection practice in reexamination proceedings see MPEP § 2271.
706.07(a) Final Rejection, When Proper on Second Action [R-10.2019]
Second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). Where information is submitted in an information disclosure statement during the period set forth in 37 CFR 1.97(c) with a fee, the examiner may use the information submitted, e.g., a printed publication or evidence of public use, and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner. See MPEP § 609.04(b). Furthermore, a second or any subsequent action on the merits in any application will not be made final if it includes a rejection on newly cited art other than information submitted in an information disclosure statement filed under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p), of any claim not amended by applicant or patent owner in spite of the fact that other claims may have been amended to require newly cited art. Where information is submitted in a reply to a requirement under 37 CFR 1.105, the examiner may NOT make the next Office action relying on that art final unless all instances of the application of such art are necessitated by amendment.
For guidance in determining what constitutes a new ground of rejection, see MPEP § 1207.03(a).
A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection on prior art not of record of any claim amended to include limitations which should reasonably have been expected to be claimed. See MPEP § 904 et seq. However, note that an examiner cannot be expected to foresee whether or how an applicant will amend a claim to overcome a rejection except in very limited circumstances (e.g., where the examiner suggests how applicant can overcome a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph).
A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings may not be made final if it contains a new ground of rejection necessitated by the amendments to pre-AIA 35 U.S.C. 102(e) by the Intellectual Property and High Technology Technical Amendments Act of 2002 (Public Law 107-273, 116 Stat. 1758 (2002)), unless the new ground of rejection was necessitated by an amendment to the claims or as a result of information submitted in an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).
When applying any 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) /103 references against the claims of an application, the examiner should anticipate that a statement averring common ownership may qualify the applicant for the exception under 35 U.S.C. 102(b)(2)(C) or a statement of common ownership at the time the invention was made may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e). If such a statement is filed in reply to the 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) /103 rejection and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made. See MPEP §§ 2146.03 and 2154.02(c). In this situation, however, the examiner may make a new subsequent double patenting rejection based upon the excepted subject matter or disqualified reference in the next Office action, which may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) ). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.
Where the only changes in a rejection are based on treating the application as subject to current 35 U.S.C. 102 rather than the version of 35 U.S.C. 102 in effect on March 15, 2013, (the pre-AIA version) or the reverse, and any prior art relied upon in the subsequent action was prior art under both versions of 35 U.S.C. 102, then the action may be made final. For example, if a first action relied upon a reference as being available under pre-AIA 35 U.S.C. 102(e) and the subsequent action relied only on the same reference but under 35 U.S.C. 102(a)(2), the subsequent action may be made final assuming no new requirements or non-prior art rejections were made.
If an applicant amends the claims without attempting to show patentable novelty, the examiner should not allow the claims. See MPEP § 714.04. The claims may be finally rejected if, in the opinion of the examiner, they are clearly open to rejection on grounds of record.
Form paragraph 7.40 should be used where an action is made final including new grounds of rejection necessitated by applicant’s amendment.
¶ 7.40 Action Is Final, Necessitated by Amendment
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).
2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
¶ 7.40.01 Action Is Final, Necessitated by IDS With Fee
Applicant’s submission of an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) on [1] prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner that was not necessitated by amendment to the claims.
2. In bracket 1, insert the filing date of the information disclosure statement containing the identification of the item of information used in the new ground of rejection.
¶ 7.40.02.aia Action Is Final, Necessitated by Invoking the Joint Research Agreement Prior Art Exclusion Under 35 U.S.C. 102(b)(2)(C)
Applicant’s submission of the requirements for the joint research agreement prior art exclusion under 35 U.S.C. 102(b)(2)(C) on [1] prompted the new double patenting rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 2156. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph should not be used, and a final rejection is improper, where there is another new ground of rejection introduced by the examiner that was not necessitated by amendment to the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).
3. In bracket 1, insert the filing date of the submission of the requirements for the joint research agreement prior art exclusion as defined under 35 U.S.C. 102(c).
¶ 7.40.02.fti Action Is Final, Necessitated by Invoking the Joint Research Agreement Prior Art Exclusion Under Pre-AIA 35 U.S.C. 103(c)
Applicant’s submission of the requirements for the joint research agreement prior art exclusion under pre-AIA 35 U.S.C. 103(c) on [1] prompted the new double patenting rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner that was not necessitated by amendment to the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17.
2. In bracket 1, insert the filing date of the submission of the requirements for the joint research agreement prior art exclusion under pre-AIA 35 U.S.C. 103(c).
706.07(b) Final Rejection, When Proper on First Action [R-10.2019]
The claims of a new application may be finally rejected in the first Office action in those situations where (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are either identical to or patentably indistinct from the claims in the earlier application (in other words, restriction under 37 CFR 1.145 would not have been proper if the new or amended claims had been entered in the earlier application), and (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.
The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR 1.114 ) where all the claims in the application after the entry of the submission under 37 CFR 1.114 and any entered supplemental amendments (A) are either identical to or patentably indistinct from the claims in the application prior to the entry of the submission under 37 CFR 1.114, and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114.
It would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was raised.
Further, it would not be proper to make final a first Office action in a continuation-in-part application where any claim includes subject matter not present in the earlier application.
A request for an interview prior to first action on a continuing or substitute application should ordinarily be granted.
A first action final rejection should be made by using Form Paragraphs 7.41 or 7.41.03, as appropriate.
¶ 7.41 Action Is Final, First Action
This is a [1] of applicant’s earlier Application No. [2]. All claims are drawn to the same invention claimed in the earlier application and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. In bracket 1, insert either --continuation-- or --substitute--, as appropriate.
2. If an amendment was refused entry in the parent case on the grounds that it raised new issues or new matter, this form paragraph cannot be used. See MPEP § 706.07(b).
3. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP-1 or 2 months).
4. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
¶ 7.41.03 Action Is Final, First Action Following Submission Under 37 CFR 1.53(d), Continued Prosecution Application (CPA) in a Design Application
All claims are drawn to the same invention claimed in the parent application prior to the filing of this Continued Prosecution Application under 37 CFR 1.53(d) and could have been finally rejected on the grounds and art of record in the next Office action. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing under 37 CFR 1.53(d). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
1. This form paragraph is for a first action final rejection in a Continued Prosecution Application filed under 37 CFR 1.53(d) (design applications only).
2. This form paragraph must be preceded by one of form paragraphs 2.30 or 2.35, as appropriate.
¶ 7.42.09 Action Is Final, First Action Following Request for Continued Examination under 37 CFR 1.114
All claims are either identical to or patentably indistinct from the claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
This form paragraph is for a first action final rejection following a Request for Continued Examination filed under 37 CFR 1.114.
706.07(c) Final Rejection, Premature [R-11.2013]
Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This is purely a question of practice, wholly distinct from the tenability of the rejection. It may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Patent Trial and Appeal Board. It is reviewable by petition under 37 CFR 1.181. See MPEP § 1002.02(c).
706.07(d) Final Rejection, Withdrawal of, Premature [R-08.2012]
If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. The finality of the Office action must be withdrawn while the application is still pending. The examiner cannot withdraw the final rejection once the application is abandoned.
Once the finality of the Office action has been withdrawn, the next Office action may be made final if the conditions set forth in MPEP § 706.07(a) are met.
Form paragraph 7.42 should be used when withdrawing the finality of the rejection of the last Office action.
¶ 7.42 Withdrawal of Finality of Last Office Action
Applicant’s request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
706.07(e) Withdrawal of Final Rejection, General [R-08.2012]
See MPEP § 714.12 and § 714.13 for amendments after final rejection.
Once a final rejection that is not premature has been entered in an application/reexamination proceeding, it should not be withdrawn at the applicant’s or patent owner’s request except on a showing under 37 CFR 1.116(b). Further amendment or argument will be considered in certain instances. An amendment that will place the application either in condition for allowance or in better form for appeal may be admitted. Also, amendments complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(a).
The examiner may withdraw the rejection of finally rejected claims. If new facts or reasons are presented such as to convince the examiner that the previously rejected claims are in fact allowable or patentable in the case of reexamination, then the final rejection should be withdrawn. Occasionally, the finality of a rejection may be withdrawn in order to apply a new ground of rejection.
Although it is permissible to withdraw a final rejection for the purpose of entering a new ground of rejection, this practice is to be limited to situations where a new reference either fully meets at least one claim or meets it except for differences which are shown to be completely obvious. Normally, the previous rejection should be withdrawn with respect to the claim or claims involved. See MPEP § 1207.03 for a discussion of what may constitute a new ground of rejection.
The practice should not be used for application of subsidiary references, or of cumulative references, or of references which are merely considered to be better than those of record.
When a final rejection is withdrawn, all amendments filed after the final rejection are ordinarily entered.
New grounds of rejection made in an Office action reopening prosecution after the filing of an appeal brief require the approval of the supervisory patent examiner. See MPEP § 1002.02(d).
706.07(f) Time for Reply to Final Rejection [R-10.2019]
The time for reply to a final rejection is as follows:
- (A) All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain one of form paragraphs 7.39, 7.40, 7.40.01, 7.40.02.fti, 7.40.02.aia, 7.41, 7.41.03, 7.42.03.fti, 7.42.031.fti, or 7.42.09 advising applicant that if the first reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. Thus, a variable reply period will be established. If the last day of "2 months of the date of the final Office action" falls on Saturday, Sunday, or a federal holiday within the District of Columbia, and a reply is filed on the next succeeding day which is not a Saturday, Sunday, or a federal holiday, pursuant to 37 CFR 1.7(a), the reply is deemed to have been filed within the 2 months period and the shortened statutory period will expire at 3 months from the date of the final rejection or on the mailing date of the advisory action, whichever is later (see MPEP § 710.05). In no event can the statutory period for reply expire later than 6 months from the mailing date of the final rejection.
- (B) This procedure of setting a variable reply period in the final rejection dependent on when applicant files a first reply to a final Office action does not apply to situations where a SSP less than 3 months is set, e.g., reissue litigation applications (1-month SSP) or any reexamination proceeding.
I. ADVISORY ACTIONS
- (C) Where the final Office action sets a variable reply period as set forth in paragraph (A) above AND applicant files a complete first reply to the final Office action within 2 months of the date of the final Office action, the examiner must determine if the reply:
- (1) places the application in condition for allowance — then the application should be processed as an allowance and no extension fees are due;
- (2) places the application in condition for allowance except for matters of form which the examiner can change without authorization from applicant, MPEP § 1302.04 — then the application should be amended as required and processed as an allowance and no extension fees are due; or
- (3) does not place the application in condition for allowance — then the advisory action should inform applicant that the SSP for reply expires 3 months from the date of the final rejection or as of the mailing date of the advisory action, whichever is later, by checking box 1.b) at the top portion of the Advisory Action form, PTOL-303.
- (D) Where the final Office action sets a variable reply period as set forth in paragraph (A) above, and applicant does NOT file a complete first reply to the final Office action within 2 months, examiners should check box 1.a) at the top portion of the Advisory Action form, PTOL-303.
- (E) When box 1.b) at the top portion of the Advisory Action form, PTOL-303 is checked, the time for applicant to take further action (including the calculation of extension fees under 37 CFR 1.136(a) ) begins to run 3 months from the date of the final rejection, or from the date of the advisory action, whichever is later. Extension fees cannot be prorated for portions of a month. In no event can the statutory period for reply expire later than 6 months from the date of the final rejection. For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such case, if a petition for extension of time is granted, the due date for a reply is computed from the date stamped or printed on the Office action with the final rejection. See MPEP § 710.01(a). If the examiner, however, does not mail an advisory action until after the end of the 3-month period, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension of time fee would be calculated from the mailing date of the advisory action.
II. EXAMINER’S AMENDMENTS
- (F) Where a complete first reply to a final Office action has been filed within 2 months of the final Office action, an examiner’s amendment to place the application in condition for allowance may be made without the payment of extension fees even if the examiner’s amendment is made more than 3 months from the date of the final Office action. Note that an examiner’s amendment may not be made more than 6 months from the date of the final Office action, as the application would be abandoned at that point by operation of law.
- (G) Where a complete first reply to a final Office action has not been filed within 2 months of the final Office action, applicant’s authorization to make an amendment to place the application in condition for allowance must be made either within the 3 month shortened statutory period or within an extended period for reply that has been petitioned and paid for by applicant pursuant to 37 CFR 1.136(a). However, an examiner’s amendment correcting only formal matters that are identified for the first time after a reply is made to a final Office action would not require any extension fee, since the reply to the final Office action put the application in condition for allowance except for the correction of formal matters, the correction of which had not yet been required by the examiner.
- (H) An extension of time under 37 CFR 1.136(a) requires a petition for an extension and the appropriate fee provided for in 37 CFR 1.17. Where an extension of time is necessary to place an application in condition for allowance (e.g., when an examiner’s amendment is necessary after the shortened statutory period for reply has expired), applicant may file the required petition and fee or give authorization to the examiner to make the petition of record and charge a specified fee to a deposit account. Office employees may not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process fee (as opposed to information product or service fees) to a credit card. When authorization to make a petition for an extension of time of record is given to the examiner, the authorization must be given before the extended period expires. The authorization must be made of record in an examiner’s amendment by indicating the name of the person making the authorization, when the authorization was given, the deposit account number to be charged, the length of the extension requested and the amount of the fee to be charged to the deposit account. Form Paragraph 13.02.02 should be used.
¶ 13.02.02 Extension of Time and Examiner’s Amendment Authorized
An extension of time under 37 CFR 1.136(a) is required in order to make an examiner’s amendment that places this application in condition for allowance. During a conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension and authorized the following examiner’s amendment. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
Examiner Note:
1. See MPEP § 706.07(f) which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.
2. In no case can any extension carry the date for reply to an Office action beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
III. PRACTICE AFTER FINAL
- (I) Replies after final should be processed and considered promptly by all Office personnel.
- (J) Replies after final should not be considered by the examiner unless they are filed within the SSP or are accompanied by a petition for an extension of time and the appropriate fee (37 CFR 1.17 and 37 CFR 1.136(a) ). See also MPEP § 710.02(e). This requirement also applies to supplemental replies filed after the first reply.
- (K) Interviews may be conducted after the expiration of the shortened statutory period for reply to a final Office action but within the 6-month statutory period for reply without the payment of an extension fee.
- (L) Formal matters that are identified for the first time after a reply is made to a final Office action and that require action by applicant to correct may be required in an Ex parte Quayle action if the application is otherwise in condition for allowance. No extension fees would be required since the reply puts the application in condition for allowance except for the correction of formal matters — the correction of which had not yet been required by the examiner.
- (M) If prosecution is to be reopened after a final Office action has been replied to, the finality of the previous Office action should be withdrawn to avoid the issue of abandonment and the payment of extension fees. For example, if a new reference comes to the attention of the examiner which renders unpatentable a claim indicated to be allowable, the Office action should begin with a statement to the effect: "The finality of the Office action mailed is hereby withdrawn in view of the new ground of rejection set forth below." Form paragraph 7.42 could be used in addition to this statement. See MPEP § 706.07(d).
706.07(g) Transitional After-Final Practice [R-07.2015]
37 C.F.R. 1.129 Transitional procedures for limited examination after final rejection and restriction practice.
- (a) An applicant in an application, other than for reissue or a design patent, that has been pending for at least two years as of June 8, 1995, taking into account any reference made in such application to any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is entitled to have a first submission entered and considered on the merits after final rejection under the following circumstances: The Office will consider such a submission, if the first submission and the fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in § 1.17(r). If a subsequent final rejection is made in the application, applicant is entitled to have a second submission entered and considered on the merits after the subsequent final rejection under the following circumstances: The Office will consider such a submission, if the second submission and a second fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the subsequent final rejection is automatically withdrawn upon the timely filing of the submission and payment of the second fee set forth in § 1.17(r). Any submission filed after a final rejection made in an application subsequent to the fee set forth in § 1.17(r) having been twice paid will be treated as set forth in § 1.116. A submission as used in this paragraph includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims or drawings and a new substantive argument or new evidence in support of patentability.
*****
- (c) The provisions of this section shall not be applicable to any application filed after June 8, 1995.
In order to facilitate the completion of prosecution of applications pending in the USPTO as of June 8, 1995 and to ease the transition between a 17-year patent term and a 20-year patent term, Public Law 103-465 provided for the further limited reexamination of an application pending for 2 years or longer as of June 8, 1995, taking into account any reference made in the application to any earlier filed application under 35 U.S.C. 120, 121, or 365(c). The further limited reexamination permits applicants to present for consideration, as a matter of right upon payment of a fee, a submission after a final rejection has been issued on an application. An applicant will be able to take advantage of this provision on two separate occasions provided the submission and fee are presented prior to the filing of the Appeal Brief and prior to abandonment of the application. This will have the effect of enabling an applicant to essentially remove the finality of the prior Office action in the pending application on two separate occasions by paying a fee for each occasion, and avoid the impact of refiling the application to obtain consideration of additional claims and/or information relative to the claimed subject matter. The transitional after-final practice is only available to applications filed on or before June 8, 1995 and it is not available for reissue or design applications or reexamination proceedings.
The following flowchart illustrates the transitional after-final procedures set forth in 37 CFR 1.129(a).
Effective June 8, 1995, in any pending application having an actual or effective filing date of June 8, 1993 or earlier, applicant is entitled, under 37 CFR 1.129(a), to have a first submission after final rejection entered and considered on the merits, if the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an Appeal Brief under 37 CFR 41.37 and prior to abandonment. For an application entering national stage under 35 U.S.C. 371 or an application filed under 35 U.S.C. 111(a) claiming benefit under 35 U.S.C. 120 of a PCT application designating the U.S., the PCT international filing date will be used to determine whether the application has been pending for at least 2 years as of June 8, 1995.
Form paragraph 7.41.01.fti may be used to notify applicant that the application qualifies under 37 CFR 1.129(a).
¶ 7.41.01.fti Transitional After Final Practice, First Submission (37 CFR 1.129(a))
This application is subject to the provisions of Public Law 103-465, effective June 8, 1995. Accordingly, since this application has been pending for at least two years as of June 8, 1995, taking into account any reference to an earlier-filed application under 35 U.S.C. 120, 121 or 365(c), applicant, under 37 CFR 1.129(a), is entitled to have a first submission entered and considered on the merits if, prior to abandonment, the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 41.37. Upon the timely filing of a first submission and the appropriate fee of $[1] for a [2] entity under 37 CFR 1.17(r), the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant will be construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). In view of 35 U.S.C. 132, no amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application.
If applicant has filed multiple proposed amendments which, when entered, would conflict with one another, specific instructions for entry or non-entry of each such amendment should be provided upon payment of any fee under 37 CFR 1.17(r).
Examiner Note:
1. This form paragraph may follow any of form paragraphs 7.39 - 7.41 in any application filed prior to June 9, 1995, which has been pending for at least two years as of June 8, 1995, taking into account any reference under 35 U.S.C. 120, 121 or 365(c) to a previously filed application and no previous fee has been paid under 37 CFR 1.17(r).
2. This form paragraph should NOT be used in a design or reissue application, or in a reexamination proceeding.
3. In bracket 1, insert the current fee for a large or small entity, as appropriate.
4. In bracket 2, insert --small-- or --large--, depending on the current status of the application.
The submission under 37 CFR 1.129(a) may comprise, but is not limited to, an information disclosure statement (IDS), an amendment to the written description, claims or drawings, a new substantive argument and/or new evidence. No amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application 35 U.S.C. 132. In view of the fee set forth in 37 CFR 1.17(r), any (IDS) previously refused consideration in the application because of applicant’s failure to comply with 37 CFR 1.97(c) or (d) will be treated as though it has been filed within one of the time periods set forth in 37 CFR 1.97(b) and will be considered without the petition and petition fee required in 37 CFR 1.97(d), if it complies with the requirements of 37 CFR 1.98. Any IDS submitted under 37 CFR 1.129(a) on or after June 8, 2005 without a statement specified in 37 CFR 1.97(e) will be treated as though it had been filed within the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The examiner may introduce a new ground of rejection based on the information submitted in the IDS and make the next Office action final provided that the examiner introduces no other new ground of rejection, which has not been necessitated by amendment to the claims. See MPEP § 706.07(a).
If the application qualifies under 37 CFR 1.129(a), that is, it was filed on or before June 8, 1995 and the application has an effective U.S. filing date of June 8, 1993 or earlier, the examiner must check to see if the submission and 37 CFR 1.17(r) fee were filed prior to the filing of the Appeal Brief and prior to abandonment of the application. If an amendment was timely filed in reply to the final rejection but the fee set forth in 37 CFR 1.17(r) did not accompany the amendment, examiners will continue to consider these amendments in an expedited manner as set forth in MPEP § 714.13 and issue an advisory action notifying applicant whether the amendment has been entered. If the examiner indicated in an advisory action that the amendment has not been entered, applicant may then pay the fee set forth in 37 CFR 1.17(r) and any necessary fee to avoid abandonment of the application and obtain entry and consideration of the amendment as a submission under 37 CFR 1.129(a). If the submission and the fee set forth in 37 CFR 1.17(r) were timely filed in reply to the final rejection and no advisory action has been issued prior to the payment of the fee set forth in 37 CFR 1.17(r), no advisory action will be necessary. The examiner will notify applicant that the finality of the previous office action has been withdrawn pursuant to 37 CFR 1.129(a). It is noted that if the submission is accompanied by a "conditional" payment of the fee set forth in 37 CFR 1.17(r), i.e., an authorization to charge the fee set forth in 37 CFR 1.17(r) to a deposit account or to a credit card in the event that the submission would not otherwise be entered, the Office will treat the conditional payment as an unconditional payment of the 37 CFR 1.17(r) fee.
The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in 37 CFR 1.17(r). Upon the timely payment of the fee set forth in 37 CFR 1.17(r), all previously unentered submissions, and submissions filed with the 37 CFR 1.17(r) fee will be entered in the order in which they were filed absent specific instructions for entry. Any conflicting amendments should be clarified for entry by the applicant upon payment of the 37 CFR 1.17(r) fee. Form paragraph 7.42.01.fti should be used to notify applicant that the finality of the previous Office action has been withdrawn.
¶ 7.42.01.fti Withdrawal of Finality of Last Office Action - Transitional Application Under 37 CFR 1.129(a)
Since this application is eligible for the transitional procedure of 37 CFR 1.129(a), and the fee set forth in 37 CFR 1.17(r) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.129(a). Applicant’s [1] submission after final filed on [2] has been entered.
Examiner Note:
Insert --first-- or --second-- in bracket 1.
If a Notice of Appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant is construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a).
Upon the timely payment of the fee set forth in 37 CFR 1.17(r), if the examiner determines that the submission is not fully responsive to the previous Office action, e.g., if the submission only includes an information disclosure statement, applicant will be given a new shortened statutory period of 2 months to submit a complete reply. Form paragraph 7.42.02.fti should be used.
¶ 7.42.02.fti Nonresponsive Submission Filed Under 37 CFR 1.129(a)
The timely submission under 37 CFR 1.129(a) filed on [1] is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of TWO MONTHS from the mailing date of this letter to submit a complete reply. This shortened statutory period supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a). If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant is construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). The appeal stands dismissed.
Examiner Note:
The reasons why the examiner considers the submission not to be fully responsive must be set forth in bracket 2.
I. SUBMISSIONS UNDER 37 CFR 1.129(a) FILED PRIOR TO JUNE 8, 2005
After submission and payment of the fee set forth in 37 CFR 1.17(r), the next Office action on the merits may be made final only under the conditions for making a first action in a continuing application final set forth in MPEP § 706.07(b).
Form paragraph 7.42.03.fti may be used if it is appropriate to make the first action final following a submission under 37 CFR 1.129(a) filed prior to June 8, 2005.
¶ 7.42.03.fti Action Is Final, First Action Following Submission Under 37 CFR 1.129(a) Filed Prior to June 8, 2005
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.129(a) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.129(a). Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the submission under 37 CFR 1.129(a). See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
Also use form paragraph 7.41.02.fti if this is a final rejection following a first submission under 37 CFR 1.129(a).
If a subsequent final rejection is made in the application, applicant would be entitled to have a second submission entered and considered on the merits under the same conditions set forth for consideration of the first submission. Form paragraph 7.41.02.fti should be used.
¶ 7.41.02.fti Transitional After Final Practice, Second Submission (37 CFR 1.129(a))
Since the fee set forth in 37 CFR 1.17(r) for a first submission subsequent to a final rejection has been previously paid, applicant, under 37 CFR 1.129(a), is entitled to have a second submission entered and considered on the merits if, prior to abandonment, the second submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 41.37. Upon the timely filing of a second submission and the appropriate fee of $[1] for a [2] entity under 37 CFR 1.17(r), the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant will be construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). In view of 35 U.S.C. 132, no amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application.
Examiner Note:
1. This form paragraph is to follow any of form paragraphs 7.39 - 7.41 in any application filed prior to June 9, 1995, which has been pending for at least two years as of June 8, 1995, taking into account any reference under 35 U.S.C. 120, 121 or 365(c) to a previously filed application and a first submission fee has been previously paid under 37 CFR 1.17(r).
2. This form paragraph should NOT be used in a design or reissue application or in a reexamination proceeding.
3. In bracket 1, insert the current fee for a large or small entity, as appropriate.
4. In bracket 2, insert --small-- or --large--, depending on the current status of the application.
5. If the fee set forth in 37 CFR 1.17(r) has been twice paid, the provisions of 37 CFR 1.129(a) are no longer available.
Any submission filed after a final rejection made in the application subsequent to the fee set forth in 37 CFR 1.17(r) having been twice paid will be treated in accordance with the current after-final practice set forth in 37 CFR 1.116.
II. SUBMISSIONS UNDER 37 CFR 1.129(a) FILED ON OR AFTER JUNE 8, 2005
For timely submission and payment of the fee set forth in 37 CFR 1.17(r) on or after June 8, 2005, the next Office action on the merits will be equivalent to the next Office action following a reply to a non-final Office action. Under existing second Office action final practice, such an Office action on the merits will be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an IDS filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
Form paragraph 7.42.031.fti may be used to make the next Office action final following a submission under 37 CFR 1.129(a) filed on or after June 8, 2005.
¶ 7.42.031.fti Action Is Final, Action Following Submission Under 37 CFR 1.129(a) Filed On or After June 8, 2005
Under the final action practice for Office actions following a submission under 37 CFR 1.129(a) filed on or after June 8, 2005, the next Office action following timely filing of a submission under 37 CFR 1.129(a) will be equivalent to the next Office action following a reply to a non-final Office action. Under existing Office second action final practice, such an Office action on the merits will be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
In this Office action, there is no new ground of rejection that was not necessitated by applicant’s amendment of the claims or based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). Accordingly, THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
Also use form paragraph 7.41.02.fti if this is a final rejection following a first submission under 37 CFR 1.129(a)
An applicant whose application is eligible for the transitional further limited examination procedure set forth in 37 CFR 1.129(a) is entitled to consideration of two after final submissions. Thus, if such an applicant has filed one submission under 37 CFR 1.129(a) and the application is again under a final rejection, the applicant is entitled to only one additional submission under 37 CFR 1.129(a). If such an applicant has filed two submissions under 37 CFR 1.129(a) and the application is again under a final rejection, applicant is not entitled to have any additional submissions considered under 37 CFR 1.129(a). Applicant may be entitled to consideration of an additional submission if the submission meets the conditions set forth in 37 CFR 1.116.
706.07(h) Request for Continued Examination (RCE) Practice [R-10.2019]
35 U.S.C. 132 Notice of rejection; reexamination.
*****
- (b) The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1).
37 C.F.R. 1.114 Request for continued examination.
- (a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:
- (1) Payment of the issue fee, unless a petition under § 1.313 is granted;
- (2) Abandonment of the application; or
- (3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.
- (b) Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action (§ 1.113 ), a notice of allowance (§ 1.311), or an action that otherwise closes prosecution in the application.
- (c) A submission as used in this section includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of § 1.111.
- (d) If an applicant timely files a submission and fee set forth in § 1.17(e), the Office will withdraw the finality of any Office action and the submission will be entered and considered. If an applicant files a request for continued examination under this section after appeal, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. An appeal brief (§ 41.37 of this title) or a reply brief (§ 41.41 of this title), or related papers, will not be considered a submission under this section.
- (e) The provisions of this section do not apply to:
- (1) A provisional application;
- (2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
- (3) An international application filed under 35 U.S.C. 363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371;
- (4) An application for a design patent;
- (5) An international design application; or
- (6) A patent under reexamination.
35 U.S.C. 132(b) provides for continued examination of an application at the request of the applicant (request for continued examination or RCE) upon payment of a fee, without requiring the applicant to file a continuing application under 37 CFR 1.53(b). To implement the RCE practice, 37 CFR 1.114 provides a procedure under which an applicant may obtain continued examination of an application in which prosecution is closed (e.g., the application is under final rejection or a notice of allowance) by filing a submission and paying a specified fee. Applicants cannot file an RCE to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145. Any newly submitted claims that are directed to an invention that is independent and distinct from the invention previously claimed will be withdrawn from consideration and not entered. See subsection VI. below. An RCE is not the filing of a new application. Thus, the Office will not convert an RCE to a new application such as an application filed under 37 CFR 1.53(b) or a continued prosecution application (CPA) under 37 CFR 1.53(d).
I. CONDITIONS FOR FILING AN RCE
The provisions of 37 CFR 1.114 apply to utility or plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, or international applications filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE provisions of 37 CFR 1.114 do not apply to:
- (A) a provisional application;
- (B) an application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
- (C) an international application filed under 35 U.S.C. 363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371;
- (D) an application for a design patent;
- (E) an international design application; or
- (F) a patent under reexamination.
See 37 CFR 1.114(e).
An applicant may obtain continued examination of an application by filing a request for continued examination (see form PTO/SB/30), a submission and the fee set forth in 37 CFR 1.17(e) prior to the earliest of:
- (A) payment of the issue fee (unless a petition under 37 CFR 1.313 is granted);
- (B) abandonment of the application; or
- (C) the filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or the commencement of a civil action (unless the appeal or civil action is terminated).
See 37 CFR 1.114(a). An applicant cannot request continued examination of an application until after prosecution in the application is closed. See 37 CFR 1.114(a). Prosecution in an application is closed if the application is under appeal, or if the last Office action is a final action (37 CFR 1.113 ), a notice of allowance (37 CFR 1.311 ), or an action that otherwise closes prosecution in the application (e.g., an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935)).
For an effective request for continued examination (RCE) to be filed in a 35 U.S.C. 371 national stage application, all required inventor’s oaths or declarations (or substitute statements) must be submitted in the application prior to or with the RCE, notwithstanding 37 CFR 1.495(c)(3) permitting an inventor’s oath or declaration to be postponed until an application is otherwise in condition for allowance. In accordance with 37 CFR 1.114(e), an RCE cannot be filed in an international application that does not comply with 35 U.S.C. 371; 35 U.S.C. 371(c)(4) requires submission of the oath or declaration by the inventor(s) or a substitute statement.
II. SUBMISSION REQUIREMENT
A "submission" as used in 37 CFR 1.114 includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. See 37 CFR 1.114(c). If a reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of 37 CFR 1.111. See 37 CFR 1.114(c). Thus, an applicant may file a submission under 37 CFR 1.114 containing only an information disclosure statement (37 CFR 1.97 and 1.98 ) in an application subject to a notice of allowance under 35 U.S.C. 151, but not in an application where the last Office action is a final rejection or an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or in an application that is under appeal. A request for a suspension of action, an appeal brief or a reply brief (or related papers) will not be considered a submission under 37 CFR 1.114. See 37 CFR 1.103 and 1.114(d). The submission, however, may consist of the arguments in a previously filed appeal brief or reply brief, or may simply consist of a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief. In addition, a previously filed amendment after final (whether or not entered) may satisfy this submission requirement.
Arguments submitted after final rejection that were entered by the examiner but not found persuasive may satisfy the submission requirement if such arguments are responsive within the meaning of 37 CFR 1.111 to the Office action. Consideration of whether any submission is responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action is done without factoring in the "final" status of such outstanding Office action. Thus, a reply that might not be acceptable as a reply under 37 CFR 1.113 when the application is under a final rejection may be acceptable as a reply under 37 CFR 1.111.
| Status of the Application | The Submission: | For More Information |
| After Final | Must include a reply under 37 CFR 1.111 to the final rejection (e.g., an amendment filed with the RCE or a previously-filed after final amendment). | See subsections V. and VI. |
| After Ex Parte Quayle action | Must include a reply to the Ex Parte Quayle action. | See subsection IX. |
| After allowance | Includes, but not limited to, an IDS, amendment, new arguments, or new evidence. | See subsection IX. |
| After appeal | Must include a reply under 37 CFR 1.111 to the final rejection (e.g., a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief). | See subsections X., XI., and XII. |
III. INITIAL PROCESSING
An RCE will be initially processed by the Technology Center (TC) assigned the application. Technical support personnel in the TC will verify that:
- (A) the RCE was filed on or after May 29, 2000;
- (B) the application was filed on or after June 8, 1995;
- (C) the application is a utility or plant application (e.g., not a design application);
- (D) the application was pending (i.e., not patented or abandoned) when the RCE was filed;
- (E) prosecution in the application is closed (e.g., the last Office action is a final rejection, notice of allowance, or an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or the application is under appeal);
- (F) the RCE was filed before the payment of the issue fee or, if not, a petition under 37 CFR 1.313 to withdraw the application from issue was filed and granted;
- (G) the RCE was accompanied by the proper fee(s) including the RCE fee under 37 CFR 1.17(e); and
- (H) the RCE included a submission as required by 37 CFR 1.114.
A. Treatment of Improper RCE
If one or more conditions for filing an RCE have not been satisfied, applicant will be so notified. Generally, a "Notice of Improper Request for Continued Examination (RCE)," Form PTO-2051, will be mailed to applicant. An improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.
If an examiner discovers that an improper RCE has been forwarded to the examiner in error, the application should be immediately returned to a head supervisory legal instruments examiner (HSLIE) within the TC.
1. Prosecution Is Not Closed
If prosecution in the application is not closed, applicant will be notified of the improper RCE and any amendment/reply will be entered. Thereafter, the application will be forwarded to the examiner for consideration of the amendment/reply under 37 CFR 1.111.
2. Application Is Under Appeal
If the application is under appeal and the RCE was not accompanied by the fee set forth in 37 CFR 1.17(e) and/or a submission as required by 37 CFR 1.114, the application will be forwarded to the examiner for appropriate treatment and applicant will be notified of the improper RCE (See subsection X below).
B. Ambiguous Transmittal Paper
If an applicant files a transmittal paper that is ambiguous as to whether it is a continued prosecution application (CPA) under 37 CFR 1.53(d) or a request for continued examination (RCE) under 37 CFR 1.114 (e.g., contains references to both an RCE and a CPA), and the application is a plant or utility application filed on or after June 8, 1995, the Office will treat the transmittal paper as an RCE under 37 CFR 1.114 since, effective July 14, 2003, CPA practice has been eliminated as to plant and utility applications. If an applicant files a transmittal paper that is ambiguous as to whether it is a CPA or an RCE, and the application is a design application, the Office will treat the transmittal paper as a request for a CPA under 37 CFR 1.53(d) since RCE practice does not apply to design applications. Other papers filed with the transmittal paper (e.g., a preliminary amendment or information disclosure statement) will not be taken into account in determining whether a transmittal paper is a CPA, or an RCE, or ambiguous as to whether it is a CPA or an RCE. If, however, applicant files an unambiguous transmittal paper that is an RCE in a design application, it will be treated as an improper RCE and a "Notice of Improper Request for Continued Examination (RCE)," Form PTO-2051, will be mailed to the applicant. An RCE is not a type of new application filing. Therefore, the Office cannot convert an RCE (whether proper or improper) to a new application such as a CPA under 37 CFR 1.53(d).
C. Treatment of Conditional RCE
If a submission is accompanied by a "conditional" RCE and payment of the RCE fee under 37 CFR 1.17(e) (i.e., an authorization to charge the 37 CFR 1.17(e) fee to a deposit account in the event that the submission would not otherwise be entered), the Office will treat the "conditional" RCE and payment as if an RCE and payment of the fee set forth in 37 CFR 1.17(e) had been filed.
D. Treatment of Proper RCE
If the conditions for filing an RCE have been satisfied, the technical support personnel will process the proper RCE. Any previously filed unentered amendments, and amendments filed with the RCE will normally be entered. Such amendments will be entered in the order in which they were filed in the absence of any specific instructions for entry. For example, if applicant files an amendment after final rejection that is denied entry by the examiner, and applicant subsequently files an RCE with an amendment, but the RCE is silent as to whether or not the previously filed after-final amendment should be entered, then the Office will enter both amendments in the order in which they were filed. If, however, applicant files an amendment after final rejection that is denied entry by the examiner, and applicant subsequently files an RCE with an amendment including specific instructions that the previously filed after-final amendment is not to be entered, then the Office will enter the amendment filed with the RCE but will not enter the after-final amendment. If conflicting amendments have been previously filed, applicant should clarify which amendments should be entered upon filing the RCE (and fee). Applicants are encouraged to file all amendments no later than the filing of the RCE to avoid disapproval of entry under 37 CFR 1.111(b). See MPEP § 714.03(a). If additional time is needed to prepare and file a supplement (e.g., affidavit or declaration containing test data) to the previously filed submission, applicant should consider filing a suspension of action by the Office under 37 CFR 1.103(c) with the RCE. For more details on suspension of action, see MPEP § 709.
After entry of any amendments and processing of the fee(s), the application will be forwarded to the examiner. Applicant does not need to pay a fee for excess claims previously paid for prior to the filing of the RCE. Of course, new claims in excess of the number previously paid for, which are filed with the RCE or thereafter, will require payment of the appropriate fees(s) under 37 CFR 1.16.
IV. IMPROPER CPA TREATED AS RCE
37 CFR 1.53(d)(1) has been amended to provide that CPA practice under 37 CFR 1.53(d) does not apply to utility and plant applications. Effective July 14, 2003, a CPA may only be filed if the prior nonprovisional application is a design application. For more details on filing a CPA, see MPEP § 201.06(d).
In the event that an applicant files a request for a CPA on or after July 14, 2003 of a utility or plant application that was filed on or after June 8, 1995, the Office will automatically treat the improper CPA as an RCE of the prior application (identified in the request for CPA) under 37 CFR 1.114. If the CPA does not satisfy the requirements of 37 CFR 1.114 to be a proper RCE (e.g., lacks a submission under 37 CFR 1.114(c), or is not accompanied by the fee set forth in 37 CFR 1.17(e) ), the improper CPA will be treated as an improper RCE, and the time period set in the last Office action (or notice of allowance) will continue to run. If the time period (considering any available extension under 37 CFR 1.136(a) ) has expired, the applicant will need to file a petition under 37 CFR 1.137 (with the submission that is required by 37 CFR 1.114 or fee set forth in 37 CFR 1.17(e) ) to revive the abandoned application.
Effective July 14, 2003, the Office will not convert an improper CPA into an application under 37 CFR 1.53(b) simply because it is requested by the applicant. The Office will convert an improper CPA into an application under 37 CFR 1.53(b) only if the applicant shows that there are extenuating circumstances that warrant the burdensome process of converting a CPA into an application under 37 CFR 1.53(b) (e.g., restoring the application to pending status and correcting the improper RCE is not possible because the application has issued as a patent).
Form paragraph 7.42.15 should be used by the examiner to inform applicant that a CPA is being treated as an RCE.
¶ 7.42.15 Continued Prosecution Application Treated as Continued Examination under 37 CFR 1.114
The request for a continued prosecution application (CPA) under 37 CFR 1.53(d) filed on [1] is acknowledged. A CPA may only be filed in a design application filed under 35 U.S.C. chapter 16. See 37 CFR 1.53(d)(1). Since a CPA of this application is not permitted under 37 CFR 1.53(d)(1), the improper request for a CPA is being treated as a request for continued examination of this application under 37 CFR 1.114.
Examiner Note:
1. Use this form paragraph to advise the applicant that a CPA is being treated as an RCE.
2. Also use form paragraph 7.42.04, 7.42.05, 7.42.06, or 7.42.07 as applicable, to acknowledge entry of applicant’s submission if the fee set forth in 37 CFR 1.17(e) has been timely paid.
3. If the fee set forth in 37 CFR 1.17(e) and/or a submission as required by 37 CFR 1.114 is/are missing and the application is not under appeal, a Notice of Improper Request for Continued Examination should be mailed. If the application is under appeal and the fee set forth in 37 CFR 1.17(e) and/or submission is/are missing, this form paragraph should be followed with one of form paragraphs 7.42.10 - 7.42.14, as applicable.
V. AFTER FINAL REJECTION
If an applicant timely files an RCE with the fee set forth in 37 CFR 1.17(e) and a submission that meets the reply requirements of 37 CFR 1.111, the Office will withdraw the finality of any Office action to which a reply is outstanding and the submission will be entered and considered. See 37 CFR 1.114(d). The submission meeting the reply requirements of 37 CFR 1.111 must be timely received to continue prosecution of an application. In other words, the mere request for, and payment of the fee for, continued examination will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.
Any submission that is an amendment must comply with the manner of making amendments as set forth in 37 CFR 1.121. See MPEP § 714.03. The amendment must include markings showing the changes relative to the last entered amendment. Even though previously filed unentered amendments after final may satisfy the submission requirement under 37 CFR 1.114(c), applicants are encouraged to file an amendment at the time of filing the RCE that incorporates all of the desired changes, including changes presented in any previously filed unentered after final amendments, accompanied by instructions not to enter the unentered after final amendments. See subsection VI for treatment of not fully responsive submissions including noncompliant amendments.
If the RCE is proper, form paragraph 7.42.04 should be used to notify applicant that the finality of the previous Office action has been withdrawn.
¶ 7.42.04 Continued Examination under 37 CFR 1.114 after Final Rejection
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a final rejection.
2. In bracket 1, insert the date(s) of receipt of the submission. The submission may be a previously filed amendment(s) after final rejection and/or an amendment accompanying the RCE. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If a reply to the Office action is outstanding the submission must meet the reply requirements of 37 CFR 1.111. Use instead form paragraph 7.42.08 if the submission does not comply with 37 CFR 1.111. Arguments which were previously submitted in a reply after final rejection, which were entered but not found persuasive, may be considered a submission under 37 CFR 1.114 if the arguments are responsive within the meaning of 37 CFR 1.111 to the outstanding Office action. If the last sentence of this form paragraph does not apply (e.g., the submission consists of previously entered arguments), it may be deleted or modified as necessary.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
VI. NOT FULLY RESPONSIVE SUBMISSION
If reply to a final Office action is outstanding and the submission is not fully responsive to the final Office action, then it must be a bona fide attempt to provide a complete reply to the final Office action in order for the RCE to toll the period for reply.
If the submission is not a bona fide attempt to provide a complete reply, the RCE should be treated as an improper RCE. Thus, a "Notice of Improper Request for Continued Examination (RCE)," Form PTO-2051, should be prepared by the technical support personnel and mailed to the applicant indicating that the request was not accompanied by a submission complying with the requirements of 37 CFR 1.111 (see 37 CFR 1.114(c) ). The RCE will not toll the period for reply and the application will be abandoned after the expiration of the statutory period for reply if no submission complying with 37 CFR 1.111 is filed. For example, if a reply to a final Office action is outstanding and the submission only includes an information disclosure statement (IDS), the submission will not be considered a bona fide attempt to provide a complete reply to the final Office action and the period for reply will not be tolled. Similarly, an amendment that would cancel all of the claims in an application and does not present any new or substitute claims is not a bona fide attempt to advance the application to final action. The Office will not enter such an amendment. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001).
If the submission is a bona fide attempt to provide a complete reply, applicant should be informed that the submission is not fully responsive to the final Office action, along with the reasons why, and given a new shortened statutory period of two months to complete the reply. See 37 CFR 1.135(c). Form paragraph 7.42.08 set forth below should be used.
Situations where a submission is not a fully responsive submission, but is a bona fide attempt to provide a complete reply are:
- (A) Non-compliant amendment - An RCE filed with a submission that is an amendment that is not in compliance with 37 CFR 1.121 but that is a bona fide attempt to provide a complete reply to the last Office action should be treated as a proper RCE and a Notice of Noncompliant Amendment should be mailed to the applicant. Applicant is given a time period of two months from the mailing date of the notice to provide an amendment complying with 37 CFR 1.121. See MPEP § 714.03 for information on the amendment practice under 37 CFR 1.121.
- (B) Presentation of claims for different invention - Applicants cannot file an RCE to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145. If an RCE is filed with an amendment canceling all claims drawn to the elected invention and presenting only claims drawn to a nonelected invention, the RCE should be treated as a proper RCE but the amendment should not be entered. The amendment is not fully responsive and applicant should be given a time period of two months to submit a complete reply. See MPEP § 821.03. Form paragraphs 8.04 or 8.26 should be used as appropriate.
¶ 7.42.08 Request For Continued Examination With Submission Filed Under 37 CFR 1.114 Which is Not Fully Responsive
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this letter to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a). In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
Examiner Note:
1. Use this form paragraph to acknowledge an RCE filed with the fee and a submission where the submission is not fully responsive to the prior Office action. This form paragraph may be used for any RCE filed with a submission which is not fully responsive, i.e., an RCE filed after final rejection, after allowance, after an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or after appeal.
2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
VII. NEW MATTER
35 U.S.C. 132(a) provides that "[n]o amendment shall introduce new matter into the disclosure of the invention." Any amendment entered pursuant to 37 CFR 1.114 that is determined to contain new matter should be treated in the same manner that a reply under 37 CFR 1.111 determined to contain new matter is currently treated. See MPEP §§ 608.04 - 608.04(c). In those instances in which an applicant seeks to add new matter to the disclosure of an application, the procedure in 37 CFR 1.114 is not available, and the applicant must file a continuation-in-part application under 37 CFR 1.53(b) containing such new matter.
VIII. FIRST ACTION FINAL AFTER FILING AN RCE
The action immediately subsequent to the filing of an RCE with a submission and fee under 37 CFR 1.114 may be made final only if the conditions set forth in MPEP § 706.07(b) are met.
It would not be proper to make final a first Office action immediately after the filing of an RCE if the first Office action includes a new ground of rejection. See MPEP § 1207.03 for a discussion of what may constitute a new ground of rejection.
Form paragraph 7.42.09 should be used if it is appropriate to make the first action after the filing of the RCE final.
¶ 7.42.09 Action Is Final, First Action Following Request for Continued Examination under 37 CFR 1.114
All claims are either identical to or patentably indistinct from the claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note:
This form paragraph is for a first action final rejection following a Request for Continued Examination filed under 37 CFR 1.114.
IX. AFTER ALLOWANCE OR QUAYLE ACTION
The phrase "withdraw the finality of any Office action" in 37 CFR 1.114(d) includes the withdrawal of the finality of a final rejection, as well as the closing of prosecution by an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or notice of allowance under 35 U.S.C. 151 (or notice of allowability). Therefore, if an applicant files an RCE with the fee set forth in 37 CFR 1.17(e) and a submission in an application that has been allowed, prosecution will be reopened. If the issue fee has been paid, however, payment of the fee for an RCE and a submission without a petition under 37 CFR 1.313 to withdraw the application from issue will not avoid issuance of the application as a patent. If an RCE (with the fee and a submission) is filed in an allowed application prior to payment of the issue fee, a petition under 37 CFR 1.313 to withdraw the application from issue is not required.
If an RCE complying with the requirements of 37 CFR 1.114 is filed in an allowed application after the issue fee has been paid and a petition under 37 CFR 1.313 is also filed and granted, prosecution will be reopened. Applicant may not obtain a refund of the issue fee. If, however, the application is subsequently allowed, the Notice of Allowance will reflect an issue fee amount that is due that is the difference between the current issue fee amount and the issue fee that was previously paid.
Form paragraph 7.42.05 should be used to notify applicant that prosecution has been reopened.
¶ 7.42.05 Continued Examination Under 37 CFR 1.114 After Allowance or Quayle Action
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a notice of allowance (or notice of allowability) or Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
2. In bracket 1 insert the date(s) of receipt of the submission. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
4. If the RCE was filed after the issue fee was paid, a petition under 37 CFR 1.313 to withdraw the application from issue must have been filed and granted.
X. AFTER APPEAL BUT BEFORE DECISION BY THE BOARD
If an applicant files an RCE under 37 CFR 1.114 after the filing of a Notice of Appeal to the Patent Trial and Appeal Board (Board), but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner, regardless of whether the RCE is proper or improper. See 37 CFR 1.114(d). The Office will withdraw the appeal upon the filing of an RCE. Applicants should advise the Board when an RCE under 37 CFR 1.114 is filed in an application containing an appeal awaiting decision. Otherwise, the Board may refuse to vacate a decision rendered after the filing (but before the recognition by the Office) of an RCE under 37 CFR 1.114.
A. Proper RCE
If the RCE is accompanied by a fee (37 CFR 1.17(e) ) and a submission that includes a reply which is responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action, the Office will withdraw the finality of the last Office action and the submission will be entered and considered. If the submission is not fully responsive to the last outstanding Office action but is considered to be a bona fide attempt to provide a complete reply, applicant will be notified that the submission is not fully responsive, along with the reasons why, and will be given a new time period to complete the reply (using form paragraph 7.42.08). See 37 CFR 1.135(c) and subsection VI.
If the RCE is proper, form paragraph 7.42.06 should be used to notify applicant that the appeal has been withdrawn and prosecution has been reopened.
¶ 7.42.06 Continued Examination Under 37 CFR 1.114 After Appeal But Before A Board Decision
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a Notice of Appeal or an appeal brief, but there has not been a decision on the appeal. Note that it is not necessary for an appeal brief to have been filed.
2. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. The submission may consist of arguments in a previously filed appeal brief or reply brief, or an incorporation of such arguments in the transmittal letter or other paper accompanying the RCE.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
B. Improper RCE
The appeal will be withdrawn even if the RCE is improper. If an RCE is filed in an application after appeal to the Board but the request does not include the fee required by 37 CFR 1.17(e), or the submission required by 37 CFR 1.114, or both, the examiner should treat the request as an improper RCE and withdraw the appeal pursuant to 37 CFR 1.114(d). If the submission is not considered to be a bona fide attempt to provide a complete reply to the last outstanding Office action (e.g., an IDS only), the submission will be treated as an improper submission or no submission at all under 37 CFR 1.114(c) (thus the request is an improper RCE). See subsection VI.
Upon withdrawal of the appeal, the application will be treated in accordance with MPEP § 1215.01 based on whether there are any allowed claims or not. The proceedings as to the rejected claims are considered terminated. Therefore, if no claim is allowed, the application is abandoned. Claims that are allowable except for their dependency from rejected claims will be treated as if they were rejected. See MPEP § 1215.01. If there is at least one allowed claim, the application should be passed to issue on the allowed claim(s). If there is at least one allowed claim but formal matters are outstanding, applicant should be given a shortened statutory period of two months in which to correct the formal matters. Form paragraphs 7.42.10 - 7.42.14 should be used as appropriate.
¶ 7.42.10 Application On Appeal, Request For Continued Examination Under 37 CFR 1.114 Without Submission/Fee; No Claims Allowed
A request for continued examination under 37 CFR 1.114 was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114. Since the proceedings as to the rejected claims are considered terminated, and no claim is allowed, the application is abandoned. See MPEP § 1215.01.
Examiner Note:
1. If a request for continued examination was filed after a Notice of Appeal or after an appeal brief, but before a decision on the appeal, and the request lacks the fee set forth in 37 CFR 1.17(e) or a submission or both, use this form paragraph to withdraw the appeal and hold the application abandoned if there are no allowed claims.
2. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.11 Application On Appeal, Request For Continued Examination Under 37 CFR 1.114 Without Submission; Claim Allowed
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the submission required by 37 CFR 1.114. Since the proceedings as to the rejected claims are considered terminated, the application will be passed to issue on allowed claim[2] . Claim[3] been canceled. See MPEP § 1215.01.
Examiner Note:
1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or after an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims that have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01.
3. This form paragraph should be used with the mailing of a Notice of Allowability.
4. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.12 Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Submission; Claim Allowed with Formal Matters Outstanding
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) , was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the submission required by 37 CFR 1.114. The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01. Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire TWO (2) MONTHS from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136, but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
Examiner Note:
1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
2. In bracket 3, explain the formal matters that must be corrected.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.13 Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Fee; Claim Allowed
A request for continued examination under 37 CFR 1.114, including a submission, was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e). Therefore, the submission has not been entered. See 37 CFR 1.116(c). Since the proceedings as to the rejected claims are considered terminated, the application will be passed to issue on allowed claim[2]. Claim[3] been canceled. See MPEP § 1215.01.
Examiner Note:
1. If a request for continued examination, including the submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required fee, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01.
3. This form paragraph should be used with the mailing of a Notice of Allowability.
4. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
¶ 7.42.14 Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Fee; Claim Allowed With Formal Matters Outstanding
A request for continued examination under 37 CFR 1.114, including a submission, was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e). Therefore, the submission has not been entered. See 37 CFR 1.116(c). The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim[2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01. Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire TWO (2) MONTHS from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136 but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
Examiner Note:
1. If a request for continued examination, including a submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the fee required by 37 CFR 1.17(e), use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
2. In bracket 3, explain the formal matters that must be corrected.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
XI. AFTER DECISION BY THE BOARD
A. Proper RCE After Board Decision
The filing of an RCE (accompanied by the fee and a submission) after a decision by the Patent Trial and Appeal Board (Board), but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit (Federal Circuit) or the commencement of a civil action in federal district court, will also result in the finality of the rejection or action being withdrawn and the submission being considered. The time period for filing a notice of appeal to the Federal Circuit or for commencing a civil action ends sixty-three (63) days after the date of the final Board decision. See 37 CFR 90.3 and MPEP § 1216. Thus, an RCE filed within this sixty-three day time period and before the filing of a notice of appeal to the Federal Circuit or the commencement of a civil action would be timely filed. In addition to the res judicata effect of a Board decision in an application (see MPEP § 2190, subsection II), a Board decision in an application is the "law of the case," and is thus controlling in that application and any subsequent, related application. See MPEP § 1214.01 (where a new ground of rejection is entered by the Board pursuant to 37 CFR 41.50(b), argument without either amendment of the claims so rejected or the submission of a showing of facts can result only in a final rejection of the claims, since the examiner is without authority to allow the claims unless amended or unless the rejection is overcome by a showing of facts not before the Board). As such, a submission containing arguments without either amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection.
Form paragraph 7.42.07 should be used to notify applicant that the appeal has been withdrawn and prosecution has been reopened.
¶ 7.42.07 Continued Examination under 37 CFR 1.114 after Board Decision but Before Further Appeal or Civil Action
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.
Examiner Note:
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was timely filed after a decision by the Patent Trial and Appeal Board but before further appeal or civil action. Generally, the deadline for filing a notice of appeal to the Federal Circuit or for commencing a civil action is sixty-three (63) days after the date of the final Board decision. See 37 CFR 90.3 and MPEP § 1216.
2. A Patent Trial and Appeal Board decision in an application has res judicata effect and is the "law of the case" and is thus controlling in that application and any subsequent, related application. Therefore, a submission containing arguments without either an amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection. See MPEP § 2190, subsection II.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
B. Improper RCE After Board Decision
If an RCE is filed after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action in federal district court, and the RCE was not accompanied by the fee and/or the submission, the examiner should notify the applicant that the RCE is improper by using form paragraph 7.42.16 set forth below. If the time for seeking court review has passed without such review being sought, the examiner should include the form paragraph with the mailing of a Notice of Allowability or a Notice of Abandonment depending on the status of the claims. See MPEP § 1214.06. If the time for seeking court review remains, the examiner should include the form paragraph on a PTOL-90. No time period should be set. If a submission is filed with the RCE, but the fee is missing, the examiner should also include a statement as to whether or not the submission has been entered. In general, such a submission should not be entered. If, however, the submission is an amendment that obviously places the application in condition for allowance, it should be entered with the approval of the supervisory patent examiner. See MPEP § 1214.07. Form paragraph 7.42.16 should not be used if the application is not a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. In that situation, a "Notice of Improper Request for Continued Examination (RCE)," Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application. When the time for seeking court review has passed without such review being sought, the examiner must take up the application for consideration. See MPEP § 1214.06 for guidance on the action to be taken.
¶ 7.42.16 After Board Decision But Before Further Appeal Or Civil Action, Request for Continued Examination Under 37 CFR 1.114 Without Submission and/or Fee
A request for continued examination (RCE) under 37 CFR 1.114 was filed in this application on [1] after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114. Accordingly, the RCE is improper and any time period running was not tolled by the filing of the improper request.
Examiner Note:
1. This form paragraph should be used with the mailing of a Notice of Allowability or a Notice of Abandonment, as appropriate, if the time for seeking court review has passed without such review being sought, or it should be used on a PTOL-90 if time still remains.
2. This form paragraph should not be used if the application is not a utility application or a plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. In that situation, a "Notice of Improper Request for Continued Examination (RCE)," Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application.
3. In general, if a submission was filed with the improper RCE in this situation, it should not be entered. An exception exists for an amendment that obviously places the application in condition for allowance. See MPEP § 1214.07. The examiner should also include a statement as to whether or not any such submission has been entered (e.g., "The submission filed with the improper RCE has not been entered.").
XII. AFTER APPEAL TO THE FEDERAL CIRCUIT OR CIVIL ACTION
The procedure set forth in 37 CFR 1.114 is not available in an application after the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action in federal district court, unless the appeal or civil action is terminated and the application is still pending. If an RCE is filed in an application that has undergone court review, the examiner should bring the application to the attention of the supervisory patent examiner or a quality assurance specialist in the TC to determine whether the RCE is proper. Unless an application contains allowed claims (or the court’s mandate clearly indicates that further action is to be taken by the Office), the termination of an unsuccessful appeal or civil action results in abandonment of the application. See MPEP § 1216.01.
XIII. FORMS
Form PTO/SB/30, "Request for Continued Examination (RCE) Transmittal," may be used by applicant for filing an RCE under 37 CFR 1.114. The form used by the Technology Centers to notify applicant of an improper RCE, "Notice of Improper Request for Continued Examination (RCE)," form PTO-2051, is shown below following form PTO/SB/30.
707 Examiner’s Letter or Action [R-10.2019]
37 C.F.R. 1.104 Nature of examination.
- (a) Examiner’s action.
- (1) On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.
- (2) The applicant, or in the case of a reexamination proceeding, both the patent owner and the requester, will be notified of the examiner’s action. The reasons for any adverse action or any objection or requirement will be stated in an Office action and such information or references will be given as may be useful in aiding the applicant, or in the case of a reexamination proceeding the patent owner, to judge the propriety of continuing the prosecution.
- (3) An international-type search will be made in all national applications filed on and after June 1, 1978.
- (4) Any national application may also have an international-type search report prepared thereon at the time of the national examination on the merits, upon specific written request therefor and payment of the international-type search report fee set forth in § 1.21(e). The Patent and Trademark Office does not require that a formal report of an international-type search be prepared in order to obtain a search fee refund in a later filed international application.
- (b) Completeness of examiner’s action. The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable.
- (c) Rejection of claims.
- (1) If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected.
- (2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.
- (3) In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section.
- (4)
- (i) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
- (ii) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if:
- (A) The applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
- (B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
- (5)
- (i) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application filed on or after November 29, 1999, or any patent issuing thereon, in an application filed before November 29, 1999, but pending on December 10, 2004, or any patent issuing thereon, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, at the time the claimed invention was made, were owned by the same person or subject to an obligation of assignment to the same person.
- (ii) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f) , or (g) in effect prior to March 16, 2013, and a claimed invention in an application pending on or after December 10, 2004, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect prior to March 16, 2013, if:
- (A) The applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention were made by or on behalf of the parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
- (B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
- (6) Patents issued prior to December 10, 2004, from applications filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on November 28, 1999.
- (d) Citation of references.
- (1) If domestic patents are cited by the examiner, their numbers and dates, and the names of the patentees will be stated. If domestic patent application publications are cited by the examiner, their publication number, publication date, and the names of the applicants will be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees will be stated, and such other data will be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon will be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, will be given.
- (2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.
- (e) Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.
For Office actions in ex parte reexamination proceedings, see MPEP §§ 2260, 2262, 2271 and their indents. For Office actions in inter partes reexamination proceedings, see MPEP §§ 2660, 2671, 2673, and their indents.
Under the current first action procedure, the examiner signifies on the Office Action Summary Form PTOL-326 certain information including the period set for reply, any attachments, and a "Summary of Action," which is the position taken on all the claims.
The examiner, in the exercise of his or her professional judgment, is permitted to indicate that an interview with applicant’s representative may result in agreements whereby the application may be placed in condition for allowance. Any amendment agreed upon during an interview may be made either by the applicant’s attorney or agent or by the examiner in an examiner’s amendment. It should be recognized that when extensive amendments are necessary it would be preferable if they were filed by the attorney or agent of record, thereby reducing the professional and clerical workload on the Office and also providing the file wrapper with a better record, including applicant’s arguments for allowability as required by 37 CFR 1.111. See MPEP § 713 et seq. for interview practice.
The list of references cited appears on a separate form, Notice of References Cited, PTO-892 (copy in MPEP § 707.05) attached to applicant’s copy of the Office action. Where applicable, a Notice of Informal Patent Application is attached to the first Office action.
The attachments have the same paper number and are to be considered as part of the Office action.
Replies to Office actions should include the application number as well as the 4-digit art unit number and the examiner’s name to expedite handling within the Office. Further, applicants are encouraged to include the 4-digit confirmation number on every paper filed in the Office. See MPEP § 503 for an explanation of the confirmation number.
In accordance with the patent statute, "Whenever, on examination, any claim for a patent is rejected, or any objection . . . made," notification of the reasons for rejection and/or objection together with such information and references as may be useful in judging the propriety of continuing the prosecution (35 U.S.C. 132 ) should be given.
Information useful in judging the propriety of continuing the prosecution may include, for example, the identification and a brief discussion of the particular figure(s) of the drawing(s), and/or page(s) or paragraph(s) of the best reference(s) cited by the examiner, the applicant, or a foreign office.
In rejecting claims for want of novelty or for obviousness, the pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. See 37 CFR 1.104(c)(2). For rejections under 35 U.S.C. 103, the way in which a reference is modified or plural references are combined should be set out.
The Office action may include objections to the disclosure, an explanation of references cited but not applied, an indication of allowable subject matter, other requirements (including requirements for restriction if applicable), and other pertinent comments. Matters unrelated to examination of the application should not be included in the Office action. See also MPEP § 707.07(d).
Office Action Summary form PTOL-326, which serves as the first page of the Office action (although a Form PTOL-90 may be used as a coversheet for the correspondence address and the mail date of the Office action), is to be used with all first Office actions and will identify any allowed claims.
One of form paragraphs 7.100, 7.101, or 7.102 should conclude all actions.
¶ 7.100 Name And Number of Examiner To Be Contacted
Any inquiry concerning this communication should be directed to [1] at telephone number [2].
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Examiner Note:
1. This form paragraph, form paragraph 7.101, or form paragraph 7.102 should be used at the conclusion of all actions.
2. In bracket 1, insert the name of the examiner designated to be contacted first regarding inquiries about the Office action. This could be either the non-signatory examiner preparing the action or the signatory examiner.
3. In bracket 2, insert the individual area code and phone number of the examiner to be contacted.
¶ 7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [6], can be reached at telephone number [7]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Examiner Note:
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
3. In bracket 3, insert the days that you work every week, e.g. "Monday-Thursday" for an examiner off every Friday.
4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM - 5:00 PM."
5. In bracket 6, insert your SPE’s name.
6. In bracket 7, insert your SPE’s area code and phone number.
¶ 7.102 Telephone Inquiry Contacts- 5/4/9 Schedule
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5]. The examiner can also be reached on alternate [6].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [7], can be reached at telephone number [8]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Examiner Note:
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
3. In bracket 3, insert the days that you work every week, e.g. "Monday-Thursday" for an examiner off on alternate Fridays.
4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM - 4:00 PM."
5. In bracket 6, insert the day in each pay-period that is your compressed day off, e.g. "Fridays" for an examiner on a 5/4/9 work schedule with the first Friday off.
6. In bracket 7, insert your SPE’s name.
7. In bracket 8, insert your SPE’s area code and phone number.
Where the text of sections of Title 35, U.S. Code was previously reproduced in an Office action, form paragraph 7.103 may be used.
¶ 7.103 Statute Cited in Prior Office Action
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
707.01 Primary Examiner Indicates Action for New Assistant [R-07.2015]
After the search has been completed, action is taken in the light of the references found. Where the assistant examiner has been in the Office but a short time, it is the duty of the primary examiner to review the application thoroughly. The usual procedure is for the assistant examiner to explain the invention and discuss the references which he or she regards as most pertinent. The primary examiner may indicate the action to be taken, whether restriction or election of species is to be required, or whether the claims are to be considered on their merits. If action on the merits is to be given and claims rejected, the primary examiner may indicate how the references are to be applied in any prior art rejection and explain the basis for any non-prior art grounds of rejection. The primary examiner may authorize allowance if all statutory requirements are met and no further field of search is known.
707.02 Applications Up for Third Action and 5-Year Applications [R-07.2015]
The supervisory patent examiners should impress upon their assistants that the shortest path to the final disposition of an application is by finding the best references on the first search and carefully applying them.
The supervisory patent examiners are expected to personally check on the pendency of every application which is up for the third or subsequent Office action with a view to finally concluding its prosecution.
Any application that has been pending five years or more should be carefully studied by the supervisory patent examiner and every effort should be made to terminate its prosecution. In order to accomplish this result, the application is to be considered "special" by the examiner.
707.03‑707.04 [Reserved]
707.05 Citation of References [R-08.2017]
37 C.F.R. 1.104 Nature of examination.
*****
- (d) Citation of references.
- (1) If domestic patents are cited by the examiner, their numbers and dates, and the names of the patentees will be stated. If domestic patent application publications are cited by the examiner, their publication number, publication date, and the names of the applicants will be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees will be stated, and such other data will be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon will be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, will be given.
- (2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.
*****
During the examination of an application or reexamination of a patent, the examiner should cite appropriate prior art which is nearest to the subject matter defined in the claims. When such prior art is cited, its pertinence should be explained.
The examiner must consider all the prior art references (alone and in combination) cited in the application or reexamination, including those cited by the applicant in a properly submitted Information Disclosure Statement. See MPEP § 609.
Form paragraph 7.96 may be used as an introductory sentence.
¶ 7.96 Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. [1]
Examiner Note:
When such prior art is cited, its relevance should be explained in bracket 1 in accordance with MPEP § 707.05.
Effective June 8, 1995, Public Law 103-465 amended 35 U.S.C. 154 to change the term of a patent to 20 years measured from the filing date of the earliest U.S. application for which benefit under 35 U.S.C. 120, 121 or 365(c) is claimed. The 20-year patent term applies to all utility and plant patents issued on applications filed on or after June 8, 1995. Effective March 16, 2013, Public Law 112-196 amended Title 35 of the U.S. Code to change U.S. practice from a first to invent system to a first inventor to file system. In certain circumstances, applicants may cancel their benefit/priority claim by amending the specification to delete any references to prior applications. Therefore, examiners should search all applications based on the actual U.S. filing date of the application rather than on the filing date of any parent U.S. application for which benefit is claimed or foreign application to which priority is claimed. Examiners should cite of interest all material prior art having an effective filing date after the filing date of the U.S. parent application or the foreign priority application but before the actual filing date of the application being examined.
Allowed applications should generally contain a citation of pertinent prior art for printing in the patent, even if no claim presented during the prosecution was considered unpatentable over such prior art. Only in those instances where a proper search has not revealed any prior art relevant to the claimed invention is it appropriate to send an application to issue with no art cited. In the case where no prior art is cited, the examiner must indicate "None" on a form PTO-892 and include it in the application file wrapper. Where references have been cited during the prosecution of parent applications and a continuing application, having no newly cited references, is ready for allowance, the cited references of the parent applications should be listed on a form PTO-892. The form should then be placed in the file of the continuing application. See MPEP § 1302.12. In a continued prosecution application filed under 37 CFR 1.53(d), it is not necessary to prepare a new form PTO-892 because the form from the parent application is in the same file wrapper and will be used by the printer.
In all continuation, divisional, and continuation-in-part applications, the parent applications should be reviewed for pertinent prior art. See MPEP § 609.02.
Applicants and/or applicants’ attorneys in PCT related national applications may wish to cite the material citations from the PCT International Search Report by an information disclosure statement under 37 CFR 1.97 and 1.98 in order to ensure consideration by the examiner.
In those instances where no information disclosure statement has been filed by the applicant and where documents are cited in the International Search Report but neither a copy of the documents nor an English translation (or English family member) is provided, the examiner may exercise discretion in deciding whether to take necessary steps to obtain the copy and/or translation.
Copies of documents cited will be provided as set forth in MPEP § 707.05(a). That is, copies of documents cited by the examiner will be provided to applicant except where the documents:
- (A) are cited by applicant in accordance with MPEP § 609, § 707.05(b), and § 708.02;
- (B) have been referred to in applicant’s disclosure statement;
- (C) are cited and have been provided in a parent application; or
- (D) are U.S. Patents or U.S. application publications.
See MPEP § 707.05(e) regarding data used in citing references.
707.05(a) Copies of Cited References [R-10.2019]
Copies of cited foreign patent documents and non-patent literature references (except as noted below) are automatically furnished without charge to applicant together with the Office action in which they are cited. Copies of the cited references are also placed in the application file for use by the examiner during the prosecution. Copies of U.S. patents and U.S. patent application publications are not provided in paper to applicants and are not placed in the application file.
Copies of references cited by applicant in accordance with MPEP §§ 609, 707.05(b) and 708.02 are not furnished to applicant with the Office action. Additionally, copies of references cited in continuation applications if they had been previously cited in the parent application are not furnished. The examiner should check the left hand column of form PTO-892 if a copy of the reference is not to be furnished to the applicant.
Copies of foreign patent documents and nonpatent literature (NPL) which are cited by the examiner at the time of allowance will be furnished to applicant with the Office action and be retained in the image file wrapper. This will apply to all allowance actions, including first action allowances and Ex Parte Quayle actions.
In the rare instance where no art is cited in a continuing application, all the references cited during the prosecution of the parent application will be listed at allowance for printing in the patent.
To assist in providing copies of, or access to, references, the examiner should:
- (A) Type the citation of the references on form PTO-892, "Notice of References Cited" using Official Correspondence;
- (B) Include in the eRed Folder all of the references cited by the examiner which are to be furnished to the applicant.
- (C) After any necessary review has taken place, forward the action to the TC mailbox for counting. Any application which is handed in without all of the required references will be returned to the examiner. The missing reference(s) should be obtained and the file returned to the technical support staff as quickly as possible.
In the case of design applications, procedures are the same as set forth in MPEP §§ 707.05(a) - 707.05(g).
¶ 7.82.03 How To Obtain Copies of U.S. Patents and U.S. Patent Application Publications
In June 2004, the USPTO ceased mailing paper copies of cited U.S. patents and U.S. patent application publications with all Office actions. See "USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies," 1282 OG 109 (May 18, 2004). Foreign patent documents and non-patent literature will continue to be provided to the applicant on paper.
All U.S. patents and U.S. patent application publications are available free of charge from the USPTO website (www.uspto.gov/patft/index.html), for a fee from the Office of Public Records (http://ebiz1.uspto.gov/oems25p/index.html), and from commercial sources. Copies are also available at the Patent and Trademark Resource Centers (PTRCs). A list of the PTRCs may be found on the USPTO website (www.uspto.gov/products/library/ptdl/locations/index.jsp). Additionally, a feature of the Office’s Private Patent Application Information Retrieval system (PAIR), E-Patent Reference, permits downloading and printing of U.S. patents and U.S. patent application publications cited in U.S. Office Actions.
STEPS TO USE THE E-PATENT REFERENCE FEATURE
Access to Private PAIR is required to utilize E-Patent Reference. If you do not already have access to Private PAIR, the Office urges practitioners and applicants not represented by a practitioner to: (1) obtain a verified USPTO.gov account; (2) obtain a USPTO customer number; (3) associate all of their pending and new application filings with their customer number; (4) install free software (supplied by the Office) required to access Private PAIR and the E-Patent Reference; and (5) make appropriate arrangements for Internet access.
Instructions for performing the 5 steps:
Step 1: Full instructions for obtaining a verified USPTO.gov account are available at the Office’s Electronic Business Center (EBC) web page (www.uspto.gov/ebc/downloads.html). Note that a notarized signature is required on the Patent Electronic System Verification Form.
Step 2: To get a Customer Number, download and complete the Customer Number Request form, PTO/SB/125, from the USPTO website (www.uspto.gov/web/forms/sb0125.pdf). The completed form can be transmitted by facsimile to the Patent Electronic Business Center at (571) 273-0177, or mailed to the address on the form. If you are a registered attorney or agent, your registration number must be associated with your customer number. This association is accomplished by adding your registration number to the Customer Number Request form.
Step 3: A description of associating a customer number with the correspondence address of an application is described at the EBC Web page (www.uspto.gov/ebc/registration_pair.html).
Step 4: The software for electronic filing is available for downloading at www.uspto.gov/ebc. Users can also contact the EFS Help Desk at (571) 272-4100 and request a copy of the software on compact disc. Users will also need Adobe Acrobat Reader, which is available through a link from the USPTO website.
Step 5: Internet access will be required which applicants may obtain through a supplier of their own choice. As images of large documents must be downloaded, high-speed Internet access is recommended.
The E-Patent Reference feature is accessed using a button on the Private PAIR screen. Ordinarily all of the cited U.S. patent and U.S. patent application publication references will be available over the Internet using the Office’s new E-Patent Reference feature. The size of the references to be downloaded will be displayed by E-Patent Reference so the download time can be estimated. Applicants and registered practitioners can select to download all of the references or any combination of cited references. Selected references will be downloaded as complete documents in Portable Document Format (PDF). The downloaded documents can be viewed and printed using commercially available software, such as ADOBE® READER®. ADOBE® READER® is available free of charge from Adobe Systems Incorporated (www.adobe.com/products/acrobat/readermain.html).
Examiner Note:
This form paragraph is recommended for use in Office actions citing U.S. patents or U.S. patent application publications when the applicant is not represented by a registered patent attorney or a registered patent agent.
707.05(b) Citation of Related Art and Information by Applicants [R-08.2012]
I. CITATION OF RELATED ART BY APPLICANTS
MPEP § 609 sets forth guidelines for applicants, their attorneys and agents who desire to submit prior art for consideration by the U.S. Patent and Trademark Office.
Submitted citations will not in any way diminish the obligation of examiners to conduct independent prior art searches, or relieve examiners of citing other pertinent prior art of which they may be aware.
Prior art submitted by applicant in the manner provided in MPEP § 609 will not be supplied with an Office action.
II. CITATION OF RELATED INFORMATION BY APPLICANTS
37 CFR 1.105 and MPEP § 704.10 et seq. set forth procedures for examiners to require applicants, their attorneys and agents to submit information reasonably necessary for the Office to examine an application or treat a matter being addressed in an application.
Any such requirement, and any information submitted in reply thereto, will not in any way diminish the obligation of examiners to conduct independent prior art searches, or relieve examiners of citing other pertinent prior art of which they may be aware.
Information submitted by applicant in the manner provided in MPEP § 704.10 et seq. will not be supplied with an Office action.
707.05(c) Order of Listing [R-08.2012]
In citing references for the first time, the identifying data of the citation should be placed on form PTO-892 "Notice of References Cited," a copy of which will be attached to the Office action. No distinction is to be made between references on which a claim is rejected and those formerly referred to as "pertinent." With the exception of applicant submitted citations, MPEP § 609 and § 708.02, it is recommended that the pertinent features of references which are not used as a basis for rejection be pointed out briefly.
See MPEP § 1302.12.
707.05(d) Reference Cited in Subsequent Actions [R-08.2012]
Where an applicant in an amendatory paper refers to a reference that is subsequently relied upon by the examiner, such reference shall be cited by the examiner in the usual manner using a form PTO-892, "Notice of References Cited," unless applicant has listed the reference on a form PTO/SB/08 that has been initialed by the examiner.
707.05(e) Data Used in Citing References [R-10.2019]
37 CFR 1.104(d) (see also MPEP §§ 707.05 and 901.05(a)) requires the examiner to provide certain data when citing references. The examiner should provide the citations on the "Notice of References Cited" form PTO-892 (copy at MPEP § 707.05).
I. U.S. PATENT DOCUMENTS
If a U.S. patent application publication is cited by the examiner, the publication number, publication date, name of the applicant, class, and subclass should be cited under the section "U.S. Patent Documents" on the form PTO-892. For U.S. patents, the patent number, patent date, name of the patentee, and the relevant classification should also be cited under the same section. In addition, examiners are encouraged to cite the kind codes printed on U.S. patent application publications and patents. See MPEP § 901.04(a) for an explanation of the kind codes. See MPEP § 901.04 for details concerning the various series of U.S. patents and how to cite them. Note that patents of the X-Series (dated prior to July 4, 1836) are not to be cited by number. Some U.S. patents issued in 1861 have two numbers thereon. The larger number should be cited.
Defensive Publications and Statutory Invention Registrations (SIRs) should be cited under the section "U.S. Patent Documents" on the form PTO-892 (see MPEP §§ 711.06(a) and 901.06(a)).
II. FOREIGN PATENTS AND FOREIGN PUBLISHED APPLICATIONS
In citing foreign patents, the patent number, kind code, citation date, name of the country, name of the patentee, and the relevant classification, if appropriate, must be given. Foreign patents searched in those Technology Centers (TCs) using the International Patent Classification (IPC) will be cited using the appropriate IPC subclass/group/subgroup. On the application’s "Search Notes" FWF form and PTO-892, the IPC subclass/group/subgroup shall be cited in the spaces provided for "Classification."
Where less than the entire disclosure of the reference is relied upon, the sheet and page numbers specifically relied upon and the total number of sheets of drawing and pages of specification must be included (except applicant submitted citations). If the entire disclosure is relied on, the total number of sheets and pages are not required to be included on the PTO-892.
Publications such as German allowed applications and Belgian and Netherlands printed specifications should be similarly handled.
International registrations published by the World Intellectual Property Organization (WIPO) under the Hague Agreement Concerning the International Registration of Industrial Designs (also known as published international design applications) are not assigned a publication number uniquely identifying the published international registration. When citing an international registration, both the International Registration Number (referenced by INID Code 11 in the publication) and the publication date should be included. See the third item under example 5 of subsection IV below.
See MPEP § 901.05(a) for a chart in which foreign language terms indicative of foreign patent and publication dates to be cited are listed.
III. PUBLICATIONS
Abstracts, abbreviatures, Alien Property Custodian publications, withdrawn U.S. patents, withdrawn U.S. patent application publications, and other non-patent documents should be cited under the section "Non-Patent Documents" on the form PTO-892). See MPEP § 711.06(a) for citation of abstracts, and abbreviatures. See MPEP § 901.06(c) for citation of Alien Property Custodian publications. In citing a publication, sufficient information should be given to determine the identity and facilitate the location of the publication. For books, the data required by 37 CFR 1.104(d) (MPEP § 707.05) with the specific pages relied on identified together with the Scientific and Technical Information Center (STIC) call number will suffice. The call number appears on the "spine" of the book if the book is thick enough and, in any event, on the back of the title page. Books on interlibrary loan will be marked with the call numbers of the other library, of course. THIS NUMBER SHOULD NOT BE CITED. The same convention should be followed in citing articles from periodicals. The call number should be cited for periodicals owned by the STIC, but not for periodicals borrowed from other libraries. In citing periodicals, information sufficient to identify the article includes the author(s) and title of the article and the title, volume number issue number, date, and pages of the periodical. If the copy relied on is located only in the Technology Center making the action (there may be no call number), the additional information, "Copy in Technology Center — —" should be given.
The following are examples of nonpatent bibliographical citations:
(A) For books:
Winslow. C. E. A. Fresh Air and Ventilation. N.Y., E. P. Dutton, 1926. p. 97-112. TI17653.W5.
(B) For parts of books:
Smith, J. F. "Patent Searching." in: Singer, T.E.R., Information and Communication Practice in Industry (New York, Reinhold, 1958), pp. 157-165. T 175.S5.
(C) For encyclopedia articles:
Calvert, R. "Patents (Patent Law)." in: Encyclopedia of Chemical Technology (1952 ed.), vol. 9, pp. 868-890. Ref. TP9.E68.
(D) For sections of handbooks:
Machinery’s Handbook, 16th ed. New York, International Press, 1959. pp. 1526-1527. TJ151.M3 1959.
(E) For periodical articles:
Noyes, W. A. A Climate for Basic Chemical Research
Chemical & Engineering News, Vol. 38, no. 42 (Oct. 17, 1960), pp. 91-95. TP1.I418.
The following are examples of how withdrawn U.S. patents and withdrawn U.S. patent application publications should be cited:
(A) Withdrawn U.S. patents:
US 6,999,999, 10/2002, Brown et al., 403/155 (withdrawn).
(B) Withdrawn U.S. patents application publications:
US 2002/0009999 A1, 7/2002, Jones et al., 403/155 (withdrawn).
Titles of books and periodicals SHOULD NOT be abbreviated because an abbreviation such as P.S.E.B.M. will not be sufficient to identify the publication. References are to be cited so that anyone reading a patent may identify and retrieve the publications cited. Bibliographic information provided must be at least enough to identify the publication. author, title and date. For books, minimal information includes the author, title, and date. For periodicals, at least the title of the periodical, the volume number, date, and pages should be given. These minimal citations may be made ONLY IF the complete bibliographic details are unknown or unavailable.
Where a nonpatent literature reference with a document identification number is cited, the identification number and the class and subclass should be included on form PTO-892. For example, the citation should be as follows: (S00840001) Winslow, C.E.A. Fresh Air and Ventilation N.Y., E.P. Dutton, 1926, p. 97-112, TH 7653, W5, 315/22.
If the original publication is located outside the Office, the examiner should immediately make or order a photocopy of at least the portion relied upon and indicate the class and subclass in which it will be filed, if any.
IV. ELECTRONIC DOCUMENTS
An electronic document is one that can be retrieved from an online source (e.g., the Internet, online database, etc.) or sources found on electronic storage media (e.g., CD-ROM, magnetic disk or tape, etc.). Many references in paper format may also be retrieved as electronic documents. Other references are retrievable only from electronic sources.
The U.S. Patent and Trademark Office follows the format recommended by World Intellectual Property Organization (WIPO) Standard ST.14, "Recommendation for the Inclusion of References Cited in Patent Documents." The format for the citation of an electronic document is as similar as possible to the format used for paper documents of the same type, but with the addition of the following information in the locations indicated, where appropriate:
- (A) the type of electronic medium provided in square brackets [ ] after the title of the publication or the designation of the host document, e.g., [online], [CD-ROM], [disk], [magnetic tape]. If desired, the type of publication (e.g., monograph, serial, database, electronic mail, computer program, bulletin board) may also be specified in the type of medium designator;
- (B) the date when the document was retrieved from the electronic media in square brackets following after the date of publication, e.g., [retrieved on March 4, 1998], [retrieved on 1998-03-04]. The four-digit year must always be given.
- (C) identification of the source of the document using the words "Retrieved from" and its address where applicable. This item will precede the citation of the relevant passages.
- (D) reference to the unique Digital Object Identifier (DOI) number, or other unique identification number, if known.
- (E) if considered necessary, the standard identifier and number assigned to the item, e.g., ISBN 2-7654-0537-9, ISSN 1045-1064. It should be noted that these numbers may differ for the same title in the printed and electronic versions.
- (F) where multiple renderings of the same document are published (e.g., PDF and HTML), an indication of the format (e.g., paper, PDF) and the location of the cited document.
- (G) use paragraph numbers, sentence numbers and line numbers (if available) to describe the specific location of the cited material within an electronic document.
- (H) claim numbers, figure numbers, chemical formula numbers, mathematical formula numbers, table heading numbers, gene sequence numbers, and computer program listing numbers if available.
- (I) specific headings within the document structure such as Best Mode of Performing the Invention or Industrial Applicability can be indicated if page, paragraph, and line numbers are not available in a cited patent document in electronic format.
- (J) specific passages of the text can be indicated if the format of the document includes pagination or an equivalent internal referencing system, or by the first and last words of the passage cited.
Office copies of an electronic document must be retained if the same document may not be available for retrieval in the future. This is especially important for sources such as the Internet and online databases.
Where an Internet source, such as a social media source, does not provide an ability to download the information as an electronic document, screen shots should be captured of the information, and an explanation provided as to what can be found in the screen shots.
If an electronic document is also available in paper form it does not need to be identified as an electronic document, unless it is considered desirable or useful to do so.
Examples 1-4: Documents retrieved from online databases outside the Internet
SU 1511467 A (BRYAN MECH) 1989-09-30 (abstract) World Patents Index [database online]. Derwent Publications, Ltd. [retrieved on 1998-02-24]. Retrieved from: Questel. DW9016, Accession No. 90-121923.
DONG, XR. ‘Analysis of patients of multiple injuries with AIS-ISS and its clinical significance in the evaluation of the emergency managements’, Chung Hua Wai Ko Tsa Chih, May 1993, Vol. 31, No. 5, pages 301-302. (abstract) Medline [online]: United States National Library of Medicine [retrieved on 24 February 1998]. Retrieved from: Dialog . Medline Accession no. 94155687, Dialog Accession No. 07736604.
JENSEN, BP. ‘Multilayer printed circuits: production and application II’. Electronik, June-July 1976, No. 6-7, pages 8, 10,12,14,16. (abstract) INSPEC [online]. London, U.K.: Institute of Electrical Engineers [retrieved on 1998-02-24]. Retrieved from: STN International, USA. Accession No. 76:956632.
JP 3002404 (Tamura Toru) 1991-03-13 (abstract). [online] [retrieved on 1998-09-02]. Retrieved from: EPOQUE PAJ Database.
Examples 5-18: Documents retrieved from the Internet
(Electronic patent document – not page based)
WO 2004/091307 A2 (ADVANCED BIONUTRITON CORP) 2004-10-28, paragraphs [0068], [0069]; examples 2, 6.
GB 2,432,062 A (GE INSPECTION TECHNOLOGY LP) 2007.05.09, Detailed Description, third paragraph beginning ‘Referring to Figure 2’.
Published International Registration Number DM/096222 (SAUL PARISIIS), published on June 9, 2017. Retrieved from the Global Design Database (www.wipo.int/ designdb/en/index.jsp ).
(Electronically registered Intellectual Property – other than patent documents)
HU D9900111 Industrial Design Application, (HADJDUTEJ TEJIPARI RT, DEBRECEN) 2007-07-19, [database online], [retrieved on 1999-10-26] Retrieved from the Industrial Design Database of the Hungarian Patent Office using Internet <URL: http://elajstrom.hpo.hu/?lang=EN>
(Entire Work – Book or Report)
WALLACE, S, and BAGHERZADEH, N. Multiple Branch and Block Prediction. Third International Symposium on High-Performance Computer Architecture [online], February 1997 [retrieved on 2007-07-18]. Retrieved from the Internet:< URL: http: // ieeexplore .ieee.org/xpl/ freeabs_all.jsp?tp=&arnumber= 569645&isnumber=12370> <DOI:10.1109/HPCA.1977.569645>. >.
(Part of Work – chapter or equivalent designation)
National Research Council, Board on Agriculture, Committee on Animal Nutrition, Subcommittee on Beef Cattle Nutrition. Nutrient Requirements of Beef Cattle [online]. 7th revised edition. Washington, DC: National Academy Press, 1996 [retrieved on 2007-07-19]. Retrieved from the Internet:< URL: http://books.nap.edu/openbook.php ?record_id=9791&page=24> Chapter 3, page 24, table 3-1, ISBN-10: 0-309-06934-3.
(Electronic Serial – articles or other contributions)
AJTAI, Miklos,. Generating Hard Instances of Lattice Problems. Electronic Colloquium on Computational Complexity, Report TR96-007 [serialonline], [retrieved on 1996-01-30]. Retrieved from the Internet <URL: http ://eccc. hpi-web.de/pub/eccc/reports/1996/TR96-007/index.html>
OWEN, RW et al. Olive-oil consumption and health: the possible role of antioxidants. Lancet Oncology, Vol 1, No. 2, 1 October 2000, pp. 107-112 [online], [retrieved on 2007-07-18]. Retrieved from the Internet <URL: http://www.ingentaconnect.com/ content/els/14702045/2000/00000001/00000002/art0001> <DOI: 10.1016/S1470-2045(00)00015-2>
(Electronic bulletin boards, message systems, discussion lists, and forums – Entire System)
BIOMET-L (A forum for the Bureau of Biometrics of New York) [online]. Albany (NY): Bureau of Biometrics, New York State Health Department, July, 1990 [retrieved 1998-02-24]. Retrieved from the Internet: <listserv@health.state.ny.us>, message: subscribe BIOMET-L your real name.
(Electronic bulletin boards, message systems, discussion lists, and forums – Contributions)
PARKER, Elliott. ‘Re: citing electronic journals’. In PACS-L (Public Access Computer Systems Forum) [online]. Houston (TX): University of Houston Libraries, November 24, 1989; 13:29:35 CST [retrieved on 1998-02-24]. Retrieved from the Internet: <URL:telnet://bruser@a.cni.org>.
(Electronic mail)
‘Plumb design of a visual thesaurus’. The Scout Report [online]. 1998, vol. 5 no. 3 [retrieved on 1998-05-18]. Retrieved from Internet electronic mail: <listserv@cs.wisc.edu>, subscribe message: info scout-report. Retrieved from the Internet: <URL: http://scout.wisc.edu/Reports/ScoutReport/1998/scout-980515.html#13> ISSN: 1092-3861\cf15.
(Product Manual/Catalogue or other information obtained from a website)
Corebuilder 3500 Layer 3 High-function Switch. Datasheet [online]. 3Com Corporation, 1997 [retrieved on 1998-02-24]. Retrieved from the Internet: <URL: www.3com.com/products/dsheets/400347.html>.
Examples 15 and 16: Documents retrieved from CD-ROM products
JP 0800085 A (TORAY IND INC), (abstract), 1996-05-31. In: Patent Abstracts of Japan [CD-ROM].
HAYASHIDA, O et al.: Specific molecular recognition by chiral cage-type cyclophanes having leucine, valine, and alanine residues. : Tetrahedron 1955, Vol. 51 (31), p. 8423-36. In: Chemical Abstracts [CD-ROM]. CAS Abstract
Examples 17 and 18: Social Media
(Twitter)
Twitter post entitled "There’s more than one way to enjoy waffles." 1 page, posted Aug. 24, 2017 by user "@uspto". Retrieved from Internet: <https://twitter.com/uspto/status/900721931477032964>.
(YouTube)
Screen captures from YouTube video clip entitled "Widget Video Demonstration," 6 pages, uploaded on March 17, 2014 by user "jdoe1". Retrieved from Internet: <http://www.youtube.com/widgetdemo>.
707.05(f) [Reserved]
707.05(g) Incorrect Citation of References [R-11.2013]
Where an error in citation of a reference is brought to the attention of the Office by applicant, a letter correcting the error, together with a correct copy of the reference, is sent to applicant. See MPEP § 710.06. Where the error is discovered by the examiner, applicant is also notified and the period for reply restarted. See MPEP § 710.06.
One or more of form paragraphs 7.81, 7.82, 7.82.01, and 7.83 may be used to correct citations or copies of references cited.
¶ 7.81 Correction Letter Re Last Office Action
In response to applicant’s [1] regarding the last Office action, the following corrective action is taken.
The period for reply of [2] MONTHS set in said Office action is restarted to begin with the mailing date of this letter.
Examiner Note:
1. In bracket 1, insert --telephone inquiry of _____-- or --communication dated ______--.
2. In bracket 2, insert new period for reply.
3. This form paragraph must be followed by one or more of form paragraphs 7.82, 7.82.01 or 7.83.
4. Before restarting the period, the SPE should be consulted.
¶ 7.82 Correction of Reference Citation
The reference [1] was not correctly cited in the last Office action. The correct citation is shown on the attached PTO-892.
Examiner Note:
1. Every correction MUST be reflected on a corrected or new PTO-892.
2. This form paragraph must follow form paragraph 7.81.
3. If a copy of the PTO-892 is being provided without correction, use form paragraph 7.83 instead of this form paragraph.
4. Also use form paragraph 7.82.01 if reference copies are being supplied.
¶ 7.82.01 Copy of Reference(s) Furnished
Copies of the following references not previously supplied are enclosed:
Examiner Note:
1. The USPTO ceased mailing paper copies of U.S. patents and U.S. application publications cited in Office Actions in nonprovisional applications beginning in June 2004. See the phase-in schedule of the E-Patent Reference program provided in "USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies," 1282 OG 109 (May 18, 2004). Therefore, this form paragraph should only be used for foreign patent documents, non-patent literature, pending applications that are not stored in the image file wrapper (IFW) system, and other information not previously supplied.
2. The reference copies being supplied must be listed following this form paragraph.
3. This form paragraph must be preceded by form paragraph 7.81 and may also be used with form paragraphs 7.82 or 7.83.
¶ 7.83 Copy of Office Action Supplied
[1] of the last Office action is enclosed.
Examiner Note:
1. In bracket 1, explain what is enclosed. For example:
a. "A corrected copy"
b. "A complete copy"
c. A specific page or pages, e.g., "Pages 3-5"
d. "A Notice of References Cited, Form PTO-892"
2. This form paragraph should follow form paragraph 7.81 and may follow form paragraphs 7.82 and 7.82.01.
In any application otherwise ready for issue, in which the erroneous citation has not been formally corrected in an official paper, the examiner is directed to correct the citation by examiner’s amendment accompanying the Notice of Allowability form PTOL-37.
If a FOREIGN patent is incorrectly cited: for example, the wrong country is indicated or the country omitted from the citation, the General Reference Branch of the Scientific and Technical Library may be helpful. The date and number of the patent are often sufficient to determine the correct country which granted the patent.
707.06 Citation of Decisions, Orders Memorandums, and Notices [R-11.2013]
In citing court decisions, when it is convenient to do so, the U.S. or Federal Reporter citation should be provided; in the alternative, the USPQ citation should be given.
The citation of decisions which are not available to the public should be avoided.
It is important to recognize that a federal district court decision that has been reversed on appeal cannot be cited as authority.
In citing a decision which is available to the public but which has not been published, the tribunal rendering the decision and complete data identifying the paper should be given. Thus, a decision of the Patent Trial and Appeal Board which has not been published but which is available to the public in the patented file should be cited, as " Ex parte — — , decision of the Patent Trial and Appeal Board, Patent No. — — — , paper No. — — , — — — pages."
Decisions found only in patented files should be cited only when there is no published decision on the same point.
When a Director’s order, notice or memorandum not yet incorporated into this manual is cited in any official action, the title and date of the order, notice or memorandum should be given. When appropriate other data, such as a specific issue of the Official Gazette may also be given.
707.07 Completeness and Clarity of Examiner’s Action [R-08.2012]
37 C.F.R. 1.104 Nature of examination.
*****
- (b) Completeness of examiner’s action. The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable.
*****
707.07(a) Complete Action on Formal Matters [R-08.1012]
Any form that lists informalities and any additional formal requirements which the examiner desires to make should be included in the first action.
When any formal requirement is made in an examiner’s action, that action should, in all cases where it indicates allowable subject matter, call attention to 37 CFR 1.111(b) and state that a complete reply must either comply with all formal requirements or specifically traverse each requirement not complied with.
¶ 7.43.03 Allowable Subject Matter, Formal Requirements Outstanding
As allowable subject matter has been indicated, applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Examiner Note:
This form paragraph would be appropriate when changes (for example, drawing corrections or corrections to the specification) must be made prior to allowance.
707.07(b) - 707.07(c) [Reserved]
707.07(d) Language To Be Used in Rejecting Claims [R-10.2019]
Where a claim is refused for any reason relating to the merits thereof it should be "rejected" and the ground of rejection fully and clearly stated, and the word "reject" must be used. The examiner should designate the statutory basis for any ground of rejection by express reference to a section of 35 U.S.C. in the opening sentence of each ground of rejection. Claims should not be grouped together in a common rejection unless that rejection is equally applicable to all claims in the group.
The burden is on the Office to establish any prima facie case of unpatentability (see, e.g., MPEP § 2103), thus the reasoning behind any rejection must be clearly articulated. For example, if the claim is rejected as broader than the enabling disclosure, the reason for so holding should be explained; if rejected as indefinite the examiner should point out wherein the indefiniteness resides; or if rejected as incomplete, the element or elements lacking should be specified, or the applicant be otherwise advised as to what the claim requires to render it complete.
Most of the form paragraphs for use in rejecting claims are now in MPEP Chapter 2100. See especially MPEP §§ 2106.07(a)(1), 2107.02, 2117, 2139.03, 2148, 2152.07, 2157, 2158.01, 2166, 2175, and 2187 for language to be used.
Everything of a personal nature must be avoided. Whatever may be the examiner’s view as to the utter lack of patentable merit in the disclosure of the application examined, he or she should not express in the record the opinion that the application is, or appears to be, devoid of patentable subject matter. Nor should he or she express doubts as to the allowability of allowed claims or state that every doubt has been resolved in favor of the applicant in granting him or her the claims allowed. The impression that any part of an Office action fails to reflect the professional judgment of the examiner or other employee authorizing the action should not be created by the action.
The examiner should, as a part of the first Office action on the merits, identify any claims which he or she judges, as presently recited, to be allowable and/or should suggest any way in which he or she considers that rejected claims may be amended to make them allowable.
707.07(e) Note All Outstanding Requirements [R-08.2012]
In taking up an amended application for action the examiner should note in every letter all the requirements outstanding against the application. Every point in the prior action of an examiner which is still applicable must be repeated or referred to, to prevent the implied waiver of the requirement. Such requirements include requirements for information under 37 CFR 1.105 and MPEP § 704.10; however the examiner should determine whether any such requirement has been satisfied by a negative reply under 37 CFR 1.105(a)(3).
As soon as allowable subject matter is found, correction of all informalities then present should be required.
707.07(f) Answer All Material Traversed [R-11.2013]
In order to provide a complete application file history and to enhance the clarity of the prosecution history record, an examiner must provide clear explanations of all actions taken by the examiner during prosecution of an application.
Where the requirements are traversed, or suspension thereof requested, the examiner should make proper reference thereto in his or her action on the amendment.
Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant’s argument and answer the substance of it.
If applicant’s arguments are persuasive and upon reconsideration of the rejection, the examiner determines that the previous rejection should be withdrawn, the examiner must provide in the next Office communication the reasons why the previous rejection is withdrawn by referring specifically to the page(s) and line(s) of applicant’s remarks which form the basis for withdrawing the rejection. It is not acceptable for the examiner to merely indicate that all of applicant’s remarks form the basis for withdrawing the previous rejection. Form paragraph 7.38.01 may be used. If the withdrawal of the previous rejection results in the allowance of the claims, the reasons, which form the basis for the withdrawal of the previous rejection, may be included in a reasons for allowance. See MPEP § 1302.14. If applicant’s arguments are persuasive and the examiner determines that the previous rejection should be withdrawn but that, upon further consideration, a new ground of rejection should be made, form paragraph 7.38.02 may be used. See MPEP § 706.07(a) to determine whether the Office action may be made final.
If a rejection of record is to be applied to a new or amended claim, specific identification of that ground of rejection, as by citation of the paragraph in the former Office letter in which the rejection was originally stated, should be given.
ANSWERING ASSERTED ADVANTAGES
After an Office action, the reply (in addition to making amendments, etc.) may frequently include arguments and affidavits to the effect that the prior art cited by the examiner does not teach how to obtain or does not inherently yield one or more advantages (new or improved results, functions or effects), which advantages are urged to warrant issue of a patent on the allegedly novel subject matter claimed.
If it is the examiner’s considered opinion that the asserted advantages are not sufficient to overcome the rejection(s) of record, he or she should state the reasons for his or her position in the record, preferably in the action following the assertion or argument relative to such advantages. By so doing the applicant will know that the asserted advantages have actually been considered by the examiner and, if appeal is taken, the Patent Trial and Appeal Board will also be advised. See MPEP § 716 et seq. for the treatment of affidavits and declarations under 37 CFR 1.132.
The importance of answering applicant’s arguments is illustrated by In re Herrmann, 261 F.2d 598, 120 USPQ 182 (CCPA 1958) where the applicant urged that the subject matter claimed produced new and useful results. The court noted that since applicant’s statement of advantages was not questioned by the examiner or the Board, it was constrained to accept the statement at face value and therefore found certain claims to be allowable. See also In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688 (Fed. Cir. 1995) (Office failed to rebut applicant’s argument).
Form paragraphs 7.37 through 7.37.13 may be used where applicant’s arguments are not persuasive.
Form paragraphs 7.38 through 7.38.02 may be used where applicant’s arguments are moot or persuasive.
¶ 7.37 Arguments Are Not Persuasive
Applicant’s arguments filed [1] have been fully considered but they are not persuasive. [2]
Examiner Note:
1. The examiner must address all arguments which have not already been responded to in the statement of the rejection.
2. In bracket 2, provide explanation as to non-persuasiveness.
¶ 7.38 Arguments Are Moot Because of New Ground of Rejection
Applicant’s arguments with respect to claim(s) [1] have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner Note:
1. In bracket 1, insert the claim number(s).
2. The examiner must, however, address any arguments presented by the applicant which are still relevant to any references being applied.
¶ 7.38.01 Arguments Persuasive, Previous Rejection/Objection Withdrawn
Applicant’s arguments, see [1], filed [2], with respect to [3] have been fully considered and are persuasive. The [4] of [5] has been withdrawn.
Examiner Note:
1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection/objection.
2. In bracket 3, insert claim number, figure number, the specification, the abstract, etc.
3. In bracket 4, insert rejection or objection.
4. In bracket 5, insert claim number, figure number, the specification, the abstract, etc.
¶ 7.38.02 Arguments Persuasive, New Ground(s) of Rejection
Applicant’s arguments, see [1], filed [2], with respect to the rejection(s) of claim(s) [3] under [4] have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of [5].
Examiner Note:
1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection.
2. In bracket 3, insert the claim number(s).
3. In bracket 4, insert the statutory basis for the previous rejection.
4. In bracket 5, insert the new ground(s) of rejection, e.g., different interpretation of the previously applied reference, newly found prior art reference(s), and provide an explanation of the rejection.
¶ 7.37.01 Unpersuasive Argument: Age of Reference(s)
In response to applicant’s argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.02 Unpersuasive Argument: Bodily Incorporation
In response to applicant’s argument that [1], the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Examiner Note:
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of bodily incorporation.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.03 Unpersuasive Argument: Hindsight Reasoning
In response to applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.04 Unpersuasive Argument: No Teaching, Suggestion, or Motivation To Combine
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, [1].
Examiner Note:
1. In bracket 1, explain where the teaching, suggestion, or motivation for the rejection is found, either in the references, or in the knowledge generally available to one of ordinary skill in the art.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.05 Unpersuasive Argument: Nonanalogous Art
In response to applicant’s argument that [1] is nonanalogous art, it has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, [2].
Examiner Note:
1. In bracket 1, enter the name of the reference which applicant alleges is nonanalogous.
2. In bracket 2, explain why the reference is analogous art.
3. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.06 Unpersuasive Argument: Number of References
In response to applicant’s argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.07 Unpersuasive Argument: Applicant Obtains Result Not Contemplated by Prior Art
In response to applicant’s argument that [1], the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Examiner Note:
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of results not contemplated by the prior art.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.08 Unpersuasive Argument: Arguing Limitations Which Are Not Claimed
In response to applicant’s argument that the references fail to show certain features of applicant’s invention, it is noted that the features upon which applicant relies (i.e., [1]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner Note:
1. In bracket 1, recite the features upon which applicant relies, but which are not recited in the claim(s).
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.09 Unpersuasive Argument: Intended Use
In response to applicant’s argument that [1], a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Examiner Note:
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of intended use.
2. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.10 Unpersuasive Argument: Limitation(s) in Preamble
Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) [1]. When reading the preamble in the context of the entire claim, the recitation [2] is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Examiner Note:
1. In bracket 1, identify the claim(s) the applicant’s unpersuasive argument addresses.
2. In bracket 2, briefly restate the recitation about which applicant is arguing.
3. This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.11 Unpersuasive Argument: General Allegation of Patentability
Applicant’s arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.12 Unpersuasive Argument: Novelty Not Clearly Pointed Out
Applicant’s arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
¶ 7.37.13 Unpersuasive Argument: Arguing Against References Individually
In response to applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.37.
707.07(g) Piecemeal Examination [R-07.2015]
Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references. (See MPEP § 904.03.) Rejections on grounds such as lack of proper disclosure, lack of enablement, indefiniteness and res judicata should be applied where appropriate even though there may be a seemingly sufficient rejection on the basis of prior art. Where a non-prior art ground of rejection is proper, it should be stated with a full development of reasons rather than by a mere conclusion coupled with a boiler plate expression.
Certain technical rejections (e.g., negative limitations, indefiniteness) should not be made where the examiner, recognizing the limitations of the English language, is not aware of an improved manner of reciting the claimed invention.
Some situations exist where examination of an application appears best accomplished by limiting action on the claim thereof to a particular issue. These situations include the following:
- (A) Where an application is too informal for a complete action on the merits. See MPEP § 702.01;
- (B) Where there is an undue multiplicity of claims, and there has been no successful telephone request for election of a limited number of claims for full examination. See MPEP § 2173.05(n);
- (C) Where there is a misjoinder of inventions and there has been no successful telephone request for election. See MPEP §§ 803, 810, and 812.01;
- (D) Where disclosure is directed to perpetual motion. See Ex parte Payne, 1904 C.D. 42, 108 OG 1049 (Comm’r Pat. 1903). However, in such cases, the best prior art readily available should be cited and its pertinence pointed out without specifically applying it to the claims.
On the other hand, a rejection on the grounds of res judicata, no prima facie showing for reissue, new matter, or inoperativeness (not involving perpetual motion) should be accompanied by rejection on all other available grounds.
707.07(h) Notify of Inaccuracies in Amendment [R-08.2012]
See MPEP § 714, subsection II. G.
707.07(i) Each Claim To Be Mentioned in Each Office Action [R-11.2013]
In every Office action, each pending claim should be mentioned by number, and its treatment or status given. Since a claim retains its original numeral throughout the prosecution of the application, its history through successive actions is thus easily traceable. Each action should include a summary of the status of all claims presented for examination. Form PTO-326 "Office Action Summary" should be used.
Claims retained after a restriction requirement (37 CFR 1.142 ) or election of species requirement (37 CFR 1.146 ) should be treated as set out in MPEP §§ 821 to 821.04(b).
See MPEP Chapter 2300 for treatment of claims in the application of losing party in interference.
The Index of Claims should be kept up to date as set forth in MPEP § 719.04.
707.07(j) State When Claims Are Allowable [R-11.2013]
I. INVENTOR FILED APPLICATIONS
When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.
This practice will expedite prosecution and offer a service to individual inventors not represented by a registered patent attorney or agent. Although this practice may be desirable and is permissible in any case deemed appropriate by the examiner, it is especially useful in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications.
II. ALLOWABLE EXCEPT AS TO FORM
When an application discloses patentable subject matter and it is apparent from the claims and applicant’s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and, when possible, should offer a definite suggestion for correction. Further, an examiner’s suggestion of allowable subject matter may justify indicating the possible desirability of an interview to accelerate early agreement on allowable claims.
If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, the examiner may note in the Office action that certain aspects or features of the patentable invention have not been claimed and that if properly claimed such claims may be given favorable consideration.
If a claim is otherwise allowable but is dependent on a canceled claim or on a rejected claim, the Office action should state that the claim would be allowable if rewritten in independent form.
III. EARLY ALLOWANCE OF CLAIMS
Where the examiner is satisfied that the prior art has been fully developed and some of the claims are clearly allowable, the allowance of such claims should not be delayed.
Form paragraphs 7.43, 7.43.01, and 7.43.02 may be used to indicate allowable subject matter.
¶ 7.43 Objection to Claims, Allowable Subject Matter
Claim [1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
¶ 7.43.01 Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Independent Claim/Dependent Claim
Claim [1] would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in this Office action.
Examiner Note:
This form paragraph is to be used when (1) the noted independent claim(s) or (2) the noted dependent claim(s), which depend from an allowable claim, have been rejected solely on the basis of35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and would be allowable if amended to overcome the rejection.
¶ 7.43.02 Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Dependent Claim
Claim [1] would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Examiner Note:
This form paragraph is to be used only when the noted dependent claim(s), which depend from a claim that is rejected based on prior art, have been rejected solely on the basis of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and would be allowable if amended as indicated.
¶ 7.43.04 Suggestion of Allowable Drafted Claim(s), Pro Se
The following claim [1] drafted by the examiner and considered to distinguish patentably over the art of record in this application, [2] presented to applicant for consideration:
[3].
Examiner Note:
1. In bracket 2, insert --is-- or --are--.
2. In bracket 3, insert complete text of suggested claim(s).
Form paragraph 7.97 may be used to indicate allowance of claims.
¶ 7.97 Claims Allowed
Claim [1] allowed.
707.07(k) Numbering Paragraphs [R-08.2012]
It is good practice to number the paragraphs of the Office action consecutively. This facilitates their identification in the future prosecution of the application.
707.07(l) Comment on Examples [R-10.2019]
The results of the tests and examples should not normally be questioned by the examiner unless there is reasonable basis for questioning the results. If the examiner questions the results, the appropriate claims should be rejected as being based on an insufficient disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). See MPEP §§ 2161 - 2164.08(c) for a discussion of the written description and enablement requirements of 35 U.S.C 112. The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to believe that the result would be as predicted. Care should be taken that new matter is not entered into the application.
If questions are present as to operability or utility, consideration should be given to the applicability of a rejection under 35 U.S.C. 101. See MPEP § 2107 et seq.
707.08 Reviewing and Initialing by Assistant Examiner [R-10.2019]
The full surname of the examiner who prepares the Office action will, in all cases, be typed at the end of the action. The name and telephone number of the examiner who should be called if the application is to be discussed or an interview arranged will also be provided in the Office action. Form paragraph 7.100, 7.101 or 7.102 should be used.
¶ 7.100 Name And Number of Examiner To Be Contacted
Any inquiry concerning this communication should be directed to [1] at telephone number [2].
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Examiner Note:
1. This form paragraph, form paragraph 7.101, or form paragraph 7.102 should be used at the conclusion of all actions.
2. In bracket 1, insert the name of the examiner designated to be contacted first regarding inquiries about the Office action. This could be either the non-signatory examiner preparing the action or the signatory examiner.
3. In bracket 2, insert the individual area code and phone number of the examiner to be contacted.
¶ 7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [6], can be reached at telephone number [7]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Examiner Note:
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
3. In bracket 3, insert the days that you work every week, e.g. "Monday-Thursday" for an examiner off every Friday.
4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM - 5:00 PM."
5. In bracket 6, insert your SPE’s name.
6. In bracket 7, insert your SPE’s area code and phone number.
¶ 7.102 Telephone Inquiry Contacts- 5/4/9 Schedule
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5]. The examiner can also be reached on alternate [6].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [7], can be reached at telephone number [8]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Examiner Note:
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
3. In bracket 3, insert the days that you work every week, e.g. "Monday-Thursday" for an examiner off on alternate Fridays.
4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM - 4:00 PM."
5. In bracket 6, insert the day in each pay-period that is your compressed day off, e.g. "Fridays" for an examiner on a 5/4/9 work schedule with the first Friday off.
6. In bracket 7, insert your SPE’s name.
7. In bracket 8, insert your SPE’s area code and phone number.
The surname or initials of the examiner who prepared the action and the date on which the action was prepared should appear at the end of the action. If this examiner does not have the authority to sign the action, he or she should initial as appropriate, and forward the action to the authorized signatory examiner for signing.
707.09 Signing by Primary or Other Authorized Examiner [R-11.2013]
The electronic signature of the Supervisory Patent Examiner, Primary or other authorized examiner is inserted to sign Office actions. All Office actions and other correspondence should be signed promptly.
707.10 Entry [R-11.2013]
The action, signed by the authorized examiner, is soft scanned into the IFW and a copy is given electronically or mailed to applicant.
707.11 Date [R-08.2012]
The mailing date should not be typed when the Office action is written, but should be stamped or printed on all copies of the action after it has been signed by the authorized signatory examiner and the copies are about to be mailed.
707.12 Mailing [R-11.2013]
Access to the examiner’s action is given electronically or copies are mailed after the original, initialed by the assistant examiner, if any, and signed by the authorized signatory examiner, has been soft scanned into the image file wrapper.
707.13 Returned Office Action [R-11.2013]
Office actions are sometimes returned to the Office because the United States Postal Service has not been able to deliver them. Upon receipt of the returned Office action, the Technology Center (TC) technical support staff will check the application file record to ensure that the Office action was mailed to the correct correspondence address. If the Office action was not mailed to the correct correspondence address, it should be stamped "remailed" with the remailing date and mailed to the correct correspondence address. The period running against the application begins with the date of remailing. If the Office action was mailed to the correct correspondence address and it was addressed to an attorney or agent, a letter along with a copy of the Office action may be sent to the applicant, or the first named inventor if more than one inventor is the applicant, informing the applicant of the returned action. The time period for reply to the Office action will be restarted to run from the mailing date of the letter informing applicant of the returned action .
A copy of the letter and a copy of the envelope should be added to the IFW. If the period dating from the remailing elapses with no communication from applicant, the application is abandoned.
708 Order of Examination [R-11.2013]
Nonprovisional applications filed in the U.S. Patent and Trademark Office and accepted as complete applications are assigned for examination to the respective examining Technology Centers (TCs) having the classes of inventions to which the applications relate. Nonprovisional applications are ordinarily taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed except for those applications in which examination has been advanced pursuant to 37 CFR 1.102. See 37 CFR 1.496 and MPEP § 1893.03 for the order of examination of international applications in the national stage, including taking up out of order certain national stage applications which have been indicated as satisfying the criteria of PCT Article 33(1)-(4) as to novelty, inventive step and industrial applicability.
Applications which have been acted upon by the examiner, and which have been placed by the applicant in condition for further action by the examiner (amended applications) shall be taken up for action in such order as shall be determined by the Director of the USPTO.
Each examiner will give priority to that application in his or her docket, whether amended or new, which has the oldest effective U.S. filing date. This basic policy applies to all applications; rare circumstances may justify TC Directors granting individual exceptions.
The actual filing date of a continuation-in-part application is used for docketing purposes. However, the examiner may act on a continuation-in-part application by using the effective filing date, if desired.
If at any time an examiner determines that the "effective filing date" status of any application differs from what the records show, the technical support staff should be informed, who should promptly amend the records to show the correct status, with the date of correction.
The order of examination for each examiner is to give priority to reissue applications and to reexamination proceedings, with top priority to reissue applications in which litigation has been stayed (MPEP § 1442.03), to ex parte reexamination proceedings involved in litigation (MPEP § 2261), and to inter partes reexamination proceedings involved in litigation (MPEP § 2661), then to those special cases having a fixed 30-day due date, such as examiner’s answers and decisions on motions. Most other cases in the "special" category (for example, interference cases, cases made special by petition, cases ready for final conclusion, etc.) will continue in this category, with the earliest effective U.S. filing date among them normally controlling priority.
All amendments before final rejection should be responded to within two months of receipt.
708.01 List of Special Cases [R-10.2019]
37 C.F.R. 1.102 Advancement of examination.
- (a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Director to expedite the business of the Office, or upon filing of a request under paragraph (b) or (e) of this section or upon filing a petition or request under paragraph (c) or (d) of this section with a showing which, in the opinion of the Director, will justify so advancing it.
- (b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination.
- (c) A petition to make an application special may be filed without a fee if the basis for the petition is:
- (1) The applicant’s age or health; or
- (2) That the invention will materially:
- (i) Enhance the quality of the environment;
- (ii) Contribute to the development or conservation of energy resources; or
- (iii) Contribute to countering terrorism.
- (d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the fee set forth in § 1.17(h).
- (e) A request for prioritized examination under this paragraph must comply with the requirements of this paragraph and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim. Prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings. A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or paragraph (e)(2) of this section. No more than 12,000 requests for such prioritized examination will be accepted in any fiscal year.
- (1) A request for prioritized examination may be filed with an original utility or plant nonprovisional application under 35 U.S.C. 111(a). The application must include a specification as prescribed by 35 U.S.C. 112 including at least one claim, a drawing when necessary, and the inventor’s oath or declaration on filing, except that the filing of an inventor’s oath or declaration may be postponed in accordance with § 1.53(f)(3) if an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) is present upon filing. If the application is a utility application, it must be filed via the Office’s electronic filing system and include the filing fee under § 1.16(a), search fee under § 1.16(k), and examination fee under § 1.16(o) upon filing. If the application is a plant application, it must include the filing fee under § 1.16(c), search fee under § 1.16(m), and examination fee under § 1.16(q) upon filing. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application, except that the applicant may file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, and any multiple dependent claim not later than one month from a first decision on the request for prioritized examination. This one-month time period is not extendable.
- (2) A request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114. If the application is a utility application, the request must be filed via the Office’s electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. Only a single such request for prioritized examination under this paragraph may be granted in an application.
Certain procedures by the examiners take precedence over actions even on special cases.
For example, all papers typed and ready for signature should be completed and mailed.
All allowed cases returned to the examiner marked as a "Printer Rush" must be processed and returned within the period indicated.
Reissue applications, particularly those involved in stayed litigation, should be given priority.
Applications in which practice requires that the examiner act within a set period, such as 2 months after appellants brief to furnish the examiner’s answers (MPEP § 1208), necessarily take priority over special cases without specific time limits.
If an examiner is satisfied that an application is in condition for allowance or needs to be finally rejected, the examiner should give action forthwith instead of making the application await its turn.
Subject alone to diligent prosecution by the applicant, an application for patent that has once been made special and advanced out of turn for examination by reason of a ruling made in that particular case (by the Director of the USPTO or a Commissioner) will continue to be special throughout its entire course of prosecution in the U.S. Patent and Trademark Office, including appeal, if any, to the Patent Trial and Appeal Board.
The following is a list of special cases (those which are advanced out of turn for examination):
- (A) Applications on inventions that are deemed of peculiar importance to some branch of the public service and when for that reason the head of some department of the Government requests immediate action and the Director of the USPTO so orders (37 CFR 1.102 ).
- (B) Applications made special as a result of a petition to make special, a request for prioritized examination, or a request for participation in a PPH program. (See MPEP § 708.02 et seq.)
- (C) Applications for reissues, particularly those involved in stayed litigation (37 CFR 1.176 ).
- (D) Applications remanded by an appellate tribunal for further action.
- (E) Applications, once taken up for action by an examiner according to their effective filing date, should be treated as special by an examiner, art unit or Technology Center to which they may subsequently be transferred; exemplary situations include new cases transferred as the result of a telephone election and cases transferred as the result of a timely reply to any official action.
- (F) Applications which appear to interfere with other applications previously considered and found to be allowable, or which will be placed in interference with an unexpired patent or patents.
- (G) Applications ready for allowance, or ready for allowance except as to formal matters.
- (H) Applications which are in condition for final rejection.
- (I) Applications pending more than 5 years, including those which, by relation to a prior United States application, have an effective pendency of more than 5 years. See MPEP § 707.02.
- (J) Reexamination proceedings, MPEP §§ 2261 and 2661.
See also MPEP §§ 714.13, 1207, and 1309.
708.02 Petition To Make Special [R-10.2019]
37 C.F.R. 1.102 Advancement of examination.
- (a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Director to expedite the business of the Office, or upon filing of a request under paragraph (b) or (e) of this section or upon filing a petition or request under paragraph (c) or (d) of this section with a showing which, in the opinion of the Director, will justify so advancing it.
- (b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination.
- (c) A petition to make an application special may be filed without a fee if the basis for the petition is:
- (1) The applicant’s age or health; or
- (2) That the invention will materially:
- (i) Enhance the quality of the environment;
- (ii) Contribute to the development or conservation of energy resources; or
- (iii) Contribute to countering terrorism.
- (d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the fee set forth in § 1.17(h).
- (e) A request for prioritized examination under this paragraph must comply with the requirements of this paragraph and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim. Prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings. A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or paragraph (e)(2) of this section. No more than 12,000 requests for such prioritized examination will be accepted in any fiscal year.
- (1) A request for prioritized examination may be filed with an original utility or plant nonprovisional application under 35 U.S.C. 111(a). The application must include a specification as prescribed by 35 U.S.C. 112 including at least one claim, a drawing when necessary, and the inventor’s oath or declaration on filing, except that the filing of an inventor’s oath or declaration may be postponed in accordance with § 1.53(f)(3) if an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) is present upon filing. If the application is a utility application, it must be filed via the Office’s electronic filing system and include the filing fee under § 1.16(a), search fee under § 1.16(k), and examination fee under § 1.16(o) upon filing. If the application is a plant application, it must include the filing fee under § 1.16(c), search fee under § 1.16(m), and examination fee under § 1.16(q) upon filing. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application, except that the applicant may file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, and any multiple dependent claim not later than one month from a first decision on the request for prioritized examination. This one-month time period is not extendable.
- (2) A request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114. If the application is a utility application, the request must be filed via the Office’s electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. Only a single such request for prioritized examination under this paragraph may be granted in an application.
New applications ordinarily are taken up for examination in the order of their effective United States filing dates. Certain exceptions are made by way of petitions to make special, which may be granted under the conditions set forth below. Any statement in support of a petition to make special must be based on a good faith belief that the invention in fact qualifies for special status. See 37 CFR 1.56 and 11.18. Advancement of examination under 37 CFR 1.102 may be sought via a petition to make special under 37 CFR 1.102(c) - (d), or via a request for prioritized examination under 37 CFR 1.102(e).
Any petition to make special, other than those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program, filed on or after August 25, 2006 must meet the requirements for the revised accelerated examination program set forth in MPEP § 708.02(a). For prioritized examination under 37 CFR 1.102(e), see MPEP § 708.02(b). See subsections I and II below for the requirements for filing a petition to make special based on applicant’s health or age.
See the version of MPEP § 708.02 in force in August 2010 (Eighth Edition, Revision 9) for guidelines and the requirements for a petition to make special filed in an application before August 25, 2006. A petition to make special filed on or after August 25, 2006 will only be granted if it is based upon applicant’s health or age, is under the PPH pilot program (see MPEP § 708.02(c)), or complies with the requirements set forth in MPEP § 708.02(a). For a request for prioritized examination under 37 CFR 1.102(e) filed on or after September 26, 2011, see MPEP § 708.02(b).
I. APPLICANT’S HEALTH
An application may be made special upon a petition by applicant accompanied by any evidence showing that the state of health of the inventor or joint inventor is such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course, such as a doctor’s certificate or other medical certificate. No fee is required for such a petition. See 37 CFR 1.102(c).
Personal/medical information submitted as evidence to support the petition will be available to the public if the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14. If applicant does not wish to have this information become part of the application file record, the information must be submitted pursuant to MPEP § 724.02.
II. APPLICANT’S AGE
An application may be made special upon filing a petition including any evidence showing that the inventor or joint inventor is 65 years of age, or more, such as a statement by the inventor or joint inventor or a statement from a registered practitioner that he or she has evidence that the inventor or joint inventor is 65 years of age or older. No fee is required with such a petition. See 37 CFR 1.102(c).
The petition can be filed as a Web-based ePetition. See the ePetition Resource Page (www.uspto.gov/patents- application-process/applying-online/epetition-resource-page ).
Personal/medical information submitted as evidence to support the petition will be available to the public if the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14. If applicant does not wish to have this information become part of the application file record, the information must be submitted pursuant to MPEP § 724.02.
III. ENVIRONMENTAL QUALITY
The U.S. Patent and Trademark Office will accord "special" status to all patent applications for inventions which materially enhance the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).
All applicants desiring to participate in this program should petition that their applications be accorded "special" status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially enhances the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements. No fee is required for such a petition. See 37 CFR 1.102(c). If it is not clear from the application's disclosure that the claimed invention materially enhances the quality of the environment by contributing to the restoration or maintenance of one of the basic life-sustaining natural elements, the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially enhance the quality of the environment. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may enhance the quality of the environment.
IV. ENERGY
The U.S. Patent and Trademark Office will, on petition, accord "special" status to all patent applications for inventions which materially contribute to (A) the discovery or development of energy resources, or (B) the more efficient utilization and conservation of energy resources. Examples of inventions in category (A) would be developments in fossil fuels (natural gas, coal, and petroleum), hydrogen fuel technologies, nuclear energy, solar energy, etc. Category (B) would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, household appliances, etc. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).
All applicants desiring to participate in this program should petition that their applications be accorded "special" status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially contributes to category (A) or (B) set forth above. No fee is required for such a petition, 37 CFR 1.102(c). If the application disclosure is not clear on its face that the claimed invention materially contributes to category (A) or (B), the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially contribute to category (A) or (B). Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to category (A) or (B).
V. INVENTIONS FOR COUNTERING TERRORISM
In view of the importance of developing technologies for countering terrorism and the desirability of prompt disclosure of advances made in these fields, the U.S. Patent and Trademark Office will accord "special" status to patent applications for inventions which materially contribute to countering terrorism. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).
International terrorism as defined in 18 U.S.C. 2331 includes "activities that - (A) involve violent acts or acts dangerous to human life that are a violation of the criminal laws of the United States or of any State, or that would be a criminal violation if committed within the jurisdiction of the United States or of any State; [and] (B) appear to be intended - (i) to intimidate or coerce a civilian population; (ii) to influence the policy of a government by intimidation or coercion; or (iii) to affect the conduct of a government by assassination or kidnapping..." The types of technology for countering terrorism could include, but are not limited to, systems for detecting/identifying explosives, aircraft sensors/security systems, and vehicular barricades/disabling systems.
All applicants desiring to participate in this program should petition that their applications be accorded special status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially contributes to countering terrorism. No fee is required for such a petition. See 37 CFR 1.102(c). If the application disclosure is not clear on its face that the claimed invention is materially directed to countering terrorism, the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the invention materiality contributes to countering terrorism. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could counter terrorism. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to countering terrorism.
VI. HANDLING OF PETITIONS TO MAKE SPECIAL OR REQUESTS FOR ADVANCEMENT OF EXAMINATION
Applications which have been made special will be advanced out of turn for examination and will continue to be treated as special throughout the entire prosecution in the Office with the exception of applications having been granted prioritized examination which remain special until prioritized examination is terminated or until a final disposition of the application (see MPEP § 708.02(b), subsection II).
Each petition to make special or request to advance examination, regardless of the ground upon which the petition or request is based and the nature of the decision, is made of record in the application file, together with the decision thereon. The part of the Office that rules on a petition is responsible for properly entering that petition and the resulting decision in the file record. The petition, with any attached papers and supporting affidavits, will be provided as a single document in the application’s image file wrapper. The decision will be provided as a separate document similarly entered. To ensure entries in the "Contents" in proper order, the technical support staff in the TC will make certain that all papers prior to a petition have been entered and/or listed in the application file before forwarding it for consideration of the petition. Note MPEP § 1002.02(s). Currently petitions to make special based on applicant’s health or age, participation in a PPH program, or under a pilot program, and requests for prioritized examination under 37 CFR 1.102(e) are decided by the Office of Petitions. All other petitions to make special are decided by the Quality Assurance Specialist of the TC to which the application is assigned.
708.02(a) Accelerated Examination [R-10.2019]
All petitions to make special, except those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program must meet the requirements set forth in subsection I below. See MPEP § 708.02 subsection I or II (where appropriate) for the requirements for filing a petition to make special based on applicant’s health or age. For prioritized examination under 37 CFR 1.102(e), see MPEP § 708.02(b). For participation in the Patent Prosecution Highway program, see MPEP § 708.02(c).
I. REQUIREMENTS FOR PETITIONS TO MAKE SPECIAL UNDER ACCELERATED EXAMINATION
A new application may be granted accelerated examination status under the following conditions:
- (A) The application must be filed with a petition to make special under the accelerated examination program accompanied by either the fee set forth in 37 CFR 1.17(h) or a statement that the claimed subject matter is directed to environmental quality, the development or conservation of energy resources, or countering terrorism. See 37 CFR 1.102(c)(2). Applicant should use form PTO/SB/28 for filing the petition.
- (B) The application must be a non-reissue utility or design application filed under 35 U.S.C. 111(a).
- (C) The application, petition, and required fees must be filed electronically using the USPTO’s electronic filing system, EFS-Web. If the USPTO’s EFS-Web is not available to the public during the normal business hours for the system at the time of filing the application, applicant may file the application, other papers, and fees by mail accompanied by a statement that EFS-Web was not available during the normal business hours. The applicant should prominently indicate the paper filing is under the accelerated examination procedure to help ensure proper processing. Note, however, when the documents are filed in paper instead of through EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application. See subsection VIII.F. below for more information.
- (D) At the time of filing, the application must be complete under 37 CFR 1.51 and in condition for examination. For example, the application must be filed together with the basic filing fee, search fee, examination fee, and application size fee (if applicable), and an executed inventor’s oath or declaration (under 37 CFR 1.63 or 1.64 ) for each inventor. See subsection VIII.C. below for more information. It is noted that while an inventor’s oath or declaration is not required to obtain a filing date for applications filed under 35 U.S.C. 111(a), it is a requirement under 37 CFR 1.51 and must be present upon filing for entry in the program. Permitting an oath or declaration after filing would delay processing of the application and make it difficult to achieve the program’s goal of reaching a patentability decision within twelve months of the filing date.
- (E) The application must contain three or fewer independent claims and twenty or fewer total claims. The application must also not contain any multiple dependent claims. By filing a petition to make special under the accelerated examination program the applicant is agreeing not to separately argue the patentability of any dependent claim during any appeal in the application. Specifically, the applicant is agreeing that the dependent claims will be grouped together with and not argued separately from the independent claim from which they depend in any appeal brief filed in the application (37 CFR 41.37(c)(1)(iv) ). The petition must include a statement that applicant will agree not to separately argue the patentability of any dependent claim during any appeal in the application. See form PTO/SB/28.
- (F) The claims must be directed to a single invention. If the USPTO determines that all the claims presented are not directed to a single invention, applicant must make an election without traverse in a telephonic interview. The petition must include a statement that applicant will agree to make an election without traverse in a telephonic interview. See form PTO/SB/28.
- (G) The applicant must be willing to have an interview (including an interview before a first Office action) to discuss the prior art and any potential rejections or objections with the intention of clarifying and possibly resolving all issues with respect to patentability at that time. The petition must include a statement that applicant will agree to have such an interview when requested by the examiner. See form PTO/SB/28.
- (H) At the time of filing, applicant must provide a statement that a preexamination search was conducted, including an identification of the field of search by group/subgroup of the Cooperative Patent Classification for utility applications or class/subclass of the U.S. Patent Classification for design applications and the date of the search, where applicable. For database searches, applicant must provide the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search.
- (1) This preexamination search must involve U.S. patents and patent application publications, foreign patent documents, and non-patent literature, unless the applicant can justify with reasonable certainty that no references more pertinent than those already identified are likely to be found in the eliminated source and includes such a justification with this statement.
- (2) This preexamination search must be directed to the claimed invention and encompass all of the features of the claims, giving the claims the broadest reasonable interpretation.
- (3) The preexamination search must also encompass the disclosed features that may be claimed. An amendment to the claims (including any new claim) that is not encompassed by the preexamination search or an updated accelerated examination support document (see item I) will be treated as not fully responsive and will not be entered. See subsection IV below for more information.
- (4) A search report from a foreign patent office will not satisfy this preexamination search requirement unless the search report satisfies the requirements for a preexamination search.
- (5) Any statement in support of a petition to make special must be based on a good faith belief that the preexamination search was conducted in compliance with these requirements. See 37 CFR 1.56 and 11.18.
- (I) At the time of filing, applicant must provide in support of the petition an accelerated examination support document.
- (1) An accelerated examination support document must include an information disclosure statement (IDS) in compliance with 37 CFR 1.98 citing each reference deemed most closely related to the subject matter of each of the claims.
- (2) For each reference cited, the accelerated examination support document must include an identification of all the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference.
- (3) The accelerated examination support document must include a detailed explanation of how each of the claims are patentable over the references cited with the particularity required by 37 CFR 1.111(b) and (c).
- (4) The accelerated examination support document must include a concise statement of the utility of the invention as defined in each of the independent claims (unless the application is a design application).
- (5) The accelerated examination support document must include a showing of where each limitation of the claims finds support under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 in the written description of the specification. If applicable, the showing must also identify:
- (i) each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6; and
- (ii) the structure, material, or acts in the specification that correspond to each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of the claims finds support under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 in each such application in which such support exists.
- (6)
- (i) For an application that is subject to examination under AIA 35 U.S.C. 102 and 103 (see MPEP § 2159 et seq. to determine if an application is subject to the first inventor to file (FITF) provisions of the AIA), the accelerated examination support document must identify any cited references that disclose subject matter that may be excepted as prior art under 35 U.S.C. 102(b)(2)(C).
- (ii) For an application that is subject to examination under the pre-AIA (first to invent (FTI)) 35 U.S.C. 102 and 103, the accelerated examination support document must identify any cited references that may be disqualified as prior art under pre-AIA 35 U.S.C. 103(c) as amended by the Cooperative Research and Technology Enhancement (CREATE) Act (Pub. L. 108-453, 118 Stat. 3596 (2004)).
II. DECISION ON PETITION TO MAKE SPECIAL
Applicant will be notified of the decision by the deciding official. If the application and/or petition does not meet all the requirements set forth in subsection I above for the application to be granted special status (including a determination that the search is deemed to be insufficient), the applicant will be notified of the defects and the application will remain in the status of a new application awaiting action in its regular turn. In those instances in which the petition or accelerated examination support document is defective in one or more requirements, applicant will be given a single opportunity to perfect the petition or accelerated examination support document within a time period of two months. Extensions of time under the provisions of 37 CFR 1.136(a) will be permitted, but filing a petition for an extension of time will result in the application being taken out of the accelerated examination program. This opportunity to perfect a petition does not apply to applications that are not in condition for examination on filing. See subsection VIII.C. below. If the document is satisfactorily corrected in a timely manner, the petition will then be granted, but the final disposition of the application may occur later than twelve months from the filing date of the application. Once a petition has been granted, prosecution will proceed according to the procedure set forth below.
III. THE INITIAL ACTION ON THE APPLICATION BY THE EXAMINER
Once the application is granted special status, the application will be docketed and taken up for action expeditiously (e.g., within two weeks of the granting of special status). If it is determined that all the claims presented are not directed to a single invention, the telephone restriction practice set forth in MPEP § 812.01 will be followed. Applicant must make an election without traverse during the telephonic interview. If applicant refuses to make an election without traverse or the examiner cannot reach the applicant after a reasonable effort, the examiner will treat the first claimed invention (the invention of claim 1) as constructively elected without traverse for examination. Continuing applications (e.g., a divisional application directed to the non-elected inventions) will not automatically be given special status based on papers filed with the petition in the parent application. Each continuing application must on its own meet all requirements for special status.
If the USPTO determines that a possible rejection or other issue must be addressed, the examiner will telephone the applicant to discuss the issue and any possible amendment or submission to resolve such issue. The USPTO will not issue an Office action (other than a notice of allowance) unless either: (A) an interview was conducted but did not result in the application being placed in condition for allowance; or (B) there is a determination that an interview is unlikely to result in the application being placed in condition for allowance. Furthermore, prior to the mailing of any Office action rejecting the claims, the USPTO will conduct a conference to review the rejections set forth in the Office action.
If an Office action other than a notice of allowance is mailed, the Office action will set a shortened statutory period of two (2) months. Extensions of this shortened statutory period under 37 CFR 1.136(a) will be permitted. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. Failure to timely file a reply will result in abandonment of the application. See subsections V and VI for more information on post-allowance and after-final procedures.
IV. REPLY BY APPLICANT
A reply to an Office action must be limited to the rejections, objections, and requirements made. Any amendment that attempts to: (A) add claims which would result in more than three independent claims or more than twenty total claims pending in the application; (B) present claims not encompassed by the preexamination search (see subsection I, item (H) above) or an updated accelerated examination support document (see next paragraph); or (C) present claims that are directed to a nonelected invention or an invention other than previously claimed in the application, will be treated as not fully responsive and will not be entered. See subsection VIII.D. below for more information.
For any amendment to the claims (including any new claim) that is not encompassed by the accelerated examination support document in subsection I, item (I) above, applicant is required to provide an updated accelerated examination support document that encompasses the amended or new claims at the time of filing the amendment. Failure to provide such updated accelerated examination support document at the time of filing the amendment will cause the amendment to be treated as not fully responsive and to not be entered. See subsection VIII.D. below for more information. Any IDS filed with an updated accelerated examination support document must also comply with the requirements of 37 CFR 1.97 and 1.98.
Any reply or other papers must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the papers are not filed electronically via EFS-Web, or the reply is not fully responsive, the final disposition of the application may occur later than twelve months from the filing of the application.
V. POST-ALLOWANCE PROCESSING
The mailing of a notice of allowance is the final disposition for purposes of the twelve-month goal for the accelerated examination program. In response to a notice of allowance, applicant must pay the issue fee within three months from the date of mailing of the Notice of Allowance and Fee(s) Due (form PTOL-85) to avoid abandonment of the application. In order for the application to be expeditiously issued as a patent, the applicant must also: (A) pay the issue fee (and any outstanding fees due) within one month from the mailing date of the form PTOL-85; and (B) not file any post-allowance papers that are not required by the USPTO (e.g., an amendment under 37 CFR 1.312 that was not requested by the USPTO).
VI. AFTER-FINAL AND APPEAL PROCEDURES
The mailing of a final Office action or the filing of a notice of appeal, whichever is earlier, is the final disposition for purposes of the twelve-month goal for the accelerated examination program. Prior to the mailing of a final Office action, the USPTO will conduct a conference to review the rejections set forth in the final Office action (i.e., the type of conference conducted in an application on appeal when the applicant requests a pre-appeal brief conference). In order for the application to be expeditiously forwarded to the Patent Trial and Appeal Board (PTAB) for a decision, applicant must: (A) promptly file the notice of appeal, appeal brief, and appeal fees; and (B) not request a pre-appeal brief conference. A pre-appeal brief conference would not be of value in an application under a final Office action because the examiner will have already conducted such a conference prior to mailing the final Office action. During the appeal process, the application will be treated in accordance with the normal appeal procedures (see MPEP Chapter 1200). The USPTO will continue to treat the application as special under the accelerated examination program after the decision by the PTAB.
Any after-final amendment, affidavit, or other evidence filed under 37 CFR 1.116 or 41.33 must also meet the requirements set forth in subsection IV above. If applicant files a request for continued examination (RCE) under 37 CFR 1.114 with a submission and fee, the submission must meet the reply requirements under 37 CFR 1.111 (see 37 CFR 1.114(c) ) and the requirements set forth in subsection IV above. The filing of the RCE is a final disposition for purposes of the twelve-month goal for the accelerated examination program. The application will retain its special status and remain in the accelerated examination program. Thus, the examiner will continue to examine the application in accordance with the procedures set forth in subsection III above and any subsequent replies filed by applicant must meet the requirements of subsection IV above. The goal of the accelerated examination program will then be to reach a final disposition of the application within twelve months from the filing of the RCE.
VII. PROCEEDINGS OUTSIDE THE NORMAL EXAMINATION PROCESS
If an application becomes involved in proceedings outside the normal examination process (e.g., a secrecy order, national security review, interference, or petitions under 37 CFR 1.181, 1.182, or 1.183 ), the USPTO will treat the application as special under the accelerated examination program before and after such proceedings. During those proceedings, however, the application will not be accelerated. For example, during an interference proceeding, the application will be treated in accordance with the normal interference procedures and will not be treated under the accelerated examination program. Once any one of these proceedings is completed, the USPTO will process the application expeditiously under the accelerated examination program until it reaches final disposition, but that may occur later than twelve months from the filing of the application.
VIII. MORE INFORMATION
A. Eligibility
Any non-reissue utility or design application filed under 35 U.S.C. 111(a) on or after August 25, 2006 is eligible for the accelerated examination program. The following types of filings are not eligible for the accelerated examination program:
- (1) plant applications;
- (2) reissue applications;
- (3) applications entering the national stage from an international application after compliance with 35 U.S.C. 371;
- (4) reexamination proceedings;
- (5) RCEs under 37 CFR 1.114 (unless the application was previously granted special status under the program);
- (6) petitions to make special based on applicant’s health or age (see MPEP § 708.02; and
- (7) petitions to make special based on participation in the PPH pilot program. (see MPEP § 708.02(c)).
Rather than participating in the accelerated examination program, applicants for a design patent may participate in the expedited examination program by filing a request in compliance with the guidelines set forth in MPEP § 1504.30. See 37 CFR 1.155.
B. Form
Applicant should use form PTO/SB/28 for filing a petition to make special, other than those based on applicant’s health or age or the PPH pilot program. The form is available on EFS-Web and on the USPTO’s website at www.uspto.gov/patent/forms/forms.
C. Conditions for Examination
The application must be in condition for examination at the time of filing. This means the application must include the following:
- (1) Basic filing fee, search fee, and examination fee, under 37 CFR 1.16 (see MPEP § 607 subsection I);
- (2) Application size fee under 37 CFR 1.16(s) (if the specification and drawings exceed 100 sheets of paper) (see MPEP § 607 subsection II);
- (3) An executed inventor’s oath or declaration in compliance with 37 CFR 1.63 or 1.64 for each inventor;
- (4) A specification (in compliance with 37 CFR 1.52 ) containing a description (37 CFR 1.71 ) and claims in compliance with 37 CFR 1.75;
- (5) A title and an abstract in compliance with 37 CFR 1.72;
- (6) Drawings in compliance with 37 CFR 1.84;
- (7) Electronic submissions of sequence listings in compliance with 37 CFR 1.821(c) or (e), large tables, or computer listings in compliance with 37 CFR 1.96, submitted via the USPTO’s electronic filing system (EFS) in ASCII text as part of an associated file (if applicable);
- (8) Foreign priority claim under 35 U.S.C. 119(a) - (d) identified in the application data sheet (if applicable);
- (9) Domestic benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) in compliance with 37 CFR 1.78 (e.g., for applications filed on or after September 16, 2012, the specific reference to the prior application must be in an application data sheet and for applications filed prior to September 16, 2012, the specific reference to the prior application must be submitted in the first sentence(s) of the specification or in an application data sheet, and for any benefit claim to a non-English language provisional application, the application must include a statement that (a) an English language translation, and (b) a statement that the translation is accurate, have been filed in the provisional application) (if applicable);
- (10) English language translation under 37 CFR 1.52(d), a statement that the translation is accurate, and the processing fee under 37 CFR 1.17(i) (if the specification is in a non-English language);
- (11) No preliminary amendments present on the filing date of the application; and
- (12) No petition that would delay the processing of the application. For example, for an application filed prior to September 16, 2012, no petition under 37 CFR 1.47 for a non-signing inventor. For an application filed after September 16, 2012, no petition under 37 CFR 1.46(b)(2) to designate a person with sufficient proprietary interest as the applicant or a petition under 37 CFR 1.78 to accept a delayed benefit claim.
Furthermore, if the application is a design application, the application must also comply with the requirements set forth in 37 CFR 1.151, 1.152, 1.153, and 1.154.
The petition to make special will be dismissed if the application omits an item or includes a paper that causes the Office of Patent Application Processing (OPAP) to mail a notice during the formality review (e.g., a notice of incomplete application, notice to file missing parts, notice to file corrected application papers, notice of omitted items, or notice of informal application). The opportunity to perfect a petition (subsection II above) does not apply to applications that are not in condition for examination on filing.
D. Reply Not Fully Responsive
If a reply to a non-final Office action is not fully responsive, but is a bona fide attempt to advance the application to final action, the examiner may provide two months for applicant to supply the omission or a fully responsive reply. Extensions of this time period under 37 CFR 1.136(a) will be permitted. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. Failure to timely file the omission or a fully responsive reply will result in abandonment of the application. If the reply is not a bona fide attempt or if it is a reply to a final Office action, no additional time period will be given. The time period set forth in the previous Office action will continue to run.
E. Withdrawal From Accelerated Examination
There is no provision for "withdrawal" from special status under the accelerated examination program. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. An applicant may abandon the application that has been granted special status under the accelerated examination program in favor of a continuing application, and the continuing application will not be given special status under the accelerated examination program unless the continuing application is filed with a petition to make special under the accelerated examination program. The filing of an RCE under 37 CFR 1.114, however, will not result in an application being withdrawn from special status under the accelerated examination program.
F. The Twelve-Month Goal
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. The twelve-month goal is successfully achieved when one of the following final dispositions occurs:
- (1) the mailing of a notice of allowance;
- (2) the mailing of a final Office action;
- (3) the filing of an RCE; or
- (4) the abandonment of the application.
The final disposition of an application, however, may occur later than the twelve-month time frame in certain situations (e.g., an IDS citing new prior art after the mailing of a first Office action). See subsection VII above for more information on other events that may cause examination to extend beyond this twelve-month time frame. In any event, however, this twelve-month time frame is simply a goal. Any failure to meet the twelve-month goal or other issues relating to this twelve-month goal are neither petitionable nor appealable matters.
IX. FORM PARAGRAPHS
The following form paragraphs may be used for the accelerated examination program:
¶ 7.126.AE Conclusion of Requirement Mailed Without Any Other Office Action – Application Under Accelerated Examination
This requirement is subject to the provisions of 37 CFR 1.134, 1.135 and 1.136 and has a shortened statutory period of TWO (2) MONTHS. This application has been granted special status under the accelerated examination program. Extensions of time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information mailed without any other Office action. If the requirement for information is mailed with an Office action, use form paragraph 7.125 instead.
2. This form paragraph may only be used in 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).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.42.08.AE Request for Continued Examination With Submission Filed Under 37 CFR 1.114 Which Is Not Fully Responsive - Application Under Accelerated Examination
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this letter, to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. Use this form paragraph to acknowledge an RCE filed with the fee and a submission where the submission is not fully responsive to the prior Office action. This form paragraph may be used for any RCE filed with a submission which is not fully responsive, i.e., an RCE filed after final rejection, after allowance, after an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or after appeal.
2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
4. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
5. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.51.AE Quayle Action - Application Under Accelerated Examination
This application is in condition for allowance except for the following formal matters: [1].
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
Since this application has been granted special status under the accelerated examination program, a shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. Explain the formal matters which must be corrected in bracket 1.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.70.AE Updated Accelerated Examination Support Document Required for Claim Amendments Not Encompassed by Previous Accelerated Examination Support Document(s) – Application Under Accelerated Examination
Applicant is reminded that for any amendments to the claims (including any new claim) that is not encompassed by the preexamination search and accelerated examination support documents previously filed, applicant is required to provide updated preexamination search and accelerated examination support documents that encompass the amended or new claims at the time of filing the amendment. Failure to provide such updated preexamination search and accelerated examination support documents at the time of filing the amendment will cause the amendment to be treated as not fully responsive and not to be entered. See MPEP § 708.02(a), subsection VIII.D. for more information.
If the reply is not fully responsive, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This form paragraph and form paragraph 7.71.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway Program (pilot and permanent).
¶ 7.71.AE Use Of Proper Document and Fee Codes When Filing A Reply Electronically Via EFS-Web – Application Under Accelerated Examination
Any reply or other papers must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the papers are not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Any reply to this communication filed via EFS-Web must include a document that is filed using the document description of "Accelerated Exam - Transmittal amendment/reply." Applicant is reminded to use proper indexing for documents to avoid any delay in processing of follow on papers. Currently document indexing is not automated in EFS-Web and applicant must select a particular document description for each attached file. An incorrect document description for a particular file may potentially delay processing of the application. A complete listing of all document codes currently supported in EFS-Web is available at www.uspto.gov/ebc/portal/efs/ efsweb_document_descriptions.xls.
Any payment of fees via EFS-Web must be accompanied by selection of a proper fee code. An improper fee code may potentially delay processing of the application. Instructions on payment of fees via EFS-Web are available at www.uspto.gov/learning-and-resources/fees-and-payment.
Examiner Note:
1. This form paragraph and form paragraph 7.70.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway Program (pilot and permanent).
¶ 7.84.AE Amendment Is Non-Responsive to Interview – Application Under Accelerated Examination
The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. In bracket 2, insert the date of the interview.
2. In bracket 3, explain the deficiencies.
3. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
4. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.84.01.AE Paper Is Unsigned – Application Under Accelerated Examination
The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. Examiner should first try to contact applicant by telephone and ask for a properly signed reply or ratification of the reply. If attempts to contact applicant are unsuccessful, examiner may use this form paragraph in a letter requiring a properly signed reply or ratification if the reply is to a non-final Office action.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 7.95.AE Bona Fide, Non-Responsive Amendments – Application Under Accelerated Examination
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 8.26.AE Canceled Elected Claims, Non-Responsive – Application Under Accelerated Examination
The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive (MPEP § 821.03) and has not been entered. The remaining claims are not readable on the elected invention because [2].
Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of time under 37 CFR 1.136(a) are available. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
¶ 19.02.AE Requirement for Information – Application Under Accelerated Examination
The protest under 37 CFR 1.291 filed on [1] has been considered. In order to reach a full and proper consideration of the issues raised therein, it is necessary to obtain additional information from applicant regarding these issues. In particular [2]. The failure to reply to this requirement for information within TWO (2) MONTHS of the mailing date of this requirement will result in abandonment of the application. This application has been granted special status under the accelerated examination program. Extensions of time under 37 CFR 1.136(a) are available. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
Examiner Note:
1. While the examiner normally should not need further information from applicant, this form paragraph may be used to request specific additional information from the applicant.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
708.02(b) Prioritized Examination [R-10.2019]
37 C.F.R. 1.102 Advancement of examination.
*****
- (e) A request for prioritized examination under this paragraph must comply with the requirements of this paragraph and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim. Prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings. A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or paragraph (e)(2) of this section. No more than 12,000 requests for such prioritized examination will be accepted in any fiscal year.
- (1) A request for prioritized examination may be filed with an original utility or plant nonprovisional application under 35 U.S.C. 111(a). The application must include a specification as prescribed by 35 U.S.C. 112 including at least one claim, a drawing when necessary, and the inventor’s oath or declaration on filing, except that the filing of an inventor’s oath or declaration may be postponed in accordance with § 1.53(f)(3) if an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) is present upon filing. If the application is a utility application, it must be filed via the Office’s electronic filing system and include the filing fee under § 1.16(a), search fee under § 1.16(k), and examination fee under § 1.16(o) upon filing. If the application is a plant application, it must include the filing fee under § 1.16(c), search fee under § 1.16(m), and examination fee under § 1.16(q) upon filing. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application, except that the applicant may file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, and any multiple dependent claim not later than one month from a first decision on the request for prioritized examination. This one-month time period is not extendable.
- (2) A request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114. If the application is a utility application, the request must be filed via the Office’s electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. Only a single such request for prioritized examination under this paragraph may be granted in an application.
Section 11(h) of the Leahy-Smith America Invents Act provides for prioritized examination whereby applicants may request prioritized examination upon payment of appropriate fees and compliance with certain requirements.
Under prioritized examination, an application will be accorded special status until a final disposition is reached in the application. The goal for handling applications under prioritized examination is to provide, on average, a final disposition within twelve months of prioritized status being granted. Prioritized examination is available at the time of filing an original utility or plant application under 35 U.S.C. 111(a), as set forth in 37 CFR 1.102(e)(1). This is referred to as "Track One" prioritized examination. An "original" application includes a continuing application (i.e., a continuation, continuation-in-part, or divisional application) but does not include reissue applications. In addition, a single request for prioritized examination may be granted for a request for continued examination (RCE) in a plant or utility application, including an application that has entered the national stage under 35 U.S.C. 371, as set forth in 37 CFR 1.102(e)(2). This type of prioritized examination is referred to as "prioritized examination for requests for continued examination" (PE-RCE). The Office maintains a "Quick Start Guide" that illustrates how to file an electronic request for prioritized examination at www.uspto.gov/sites/default/files/documents/ track_one_quick_start_guide_11-24-2013.pdf.
To maximize the benefit of prioritized examination, applicants should consider one or more of the following: (A) acquiring a good knowledge of the state of the prior art to be able to file the application with a clear specification having a complete schedule of claims from the broadest which the applicant believes he is entitled in view of the prior art to the narrowest which the applicant is willing to accept; (B) submitting an application in condition for examination; (C) filing replies that are completely responsive to an Office action and within the shortened statutory period for reply set in the Office action; and (D) being prepared to conduct interviews with the examiner. The phrase "in condition for examination" in this context means the same as it does with respect to the current accelerated examination program, which is discussed in MPEP § 708.02(a), subsection VIII.C.
Until further notice, the Office will accept no more than 12,000 requests for prioritized examination in any fiscal year. Statistical findings about prioritized examination, including statistics concerning the Office’s ability to meet its stated goals for the program are available to the public on the Office’s Internet website at www.uspto.gov/patents/init_events/Track_One.jsp.
I. REQUIREMENTS FOR REQUESTING PRIORITIZED EXAMINATION
The requirements for requesting prioritized examination are set forth below. A request must meet the general requirements specified in subsection I.A. below, and also meet the specific requirements for either subsection I.B. (for a newly filed application) or subsection I.C. (for a request for continued examination).
A. General Requirements
1. Type of Application
The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application). The procedure for prioritized examination does not apply to design applications, reissue applications, provisional applications, or reexamination proceedings. The procedure for prioritized examination does not apply to international applications that have entered the national stage under 35 U.S.C. 371, except that such an application may undergo prioritized examination if an RCE is filed (see I.C. below). A continuing application will not automatically be given prioritized examination status based on a request filed in the parent application; each application (including each continuing application) must, on its own, meet all requirements for prioritized examination under 37 CFR 1.102(e). A utility or plant nonprovisional application filed under 35 U.S.C. 111(a) may claim priority to a foreign application under 35 U.S.C. 119(a) - (d) or (f) and remain eligible for prioritized examination.
2. Fees
Upon filing the request for prioritized examination, the following fees must be paid for the application:
- (A) the prioritized examination fee set forth in 37 CFR 1.17(c),
- (B) the processing fee set forth in 37 CFR 1.17(i)(1),
- (C) the publication fee set forth in 37 CFR 1.18(d),
- (D) the basic filing fee set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c),
- (E) the search fee set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m), and
- (F) the examination fee set forth in 37 CFR 1.16(o).
Small entity and micro entity fee reductions are available for many of the above fees; see the current fees at www.uspto.gov/curr_fees. Note 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. If any fee is unpaid at the time of filing of the application, the request for prioritized examination will be dismissed. However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.
3. Claims
The application must contain, or be amended to contain, no more than four independent claims and no more than thirty total claims. In addition, the application must not contain any multiple dependent claims. After prioritized examination has been granted in an application, an amendment that results in more than four independent claims or thirty total claims, or a multiple dependent claim, will result in termination of prioritized examination.
4. Yearly Limit
The request for prioritized examination may be accepted if the requirements under 37 CFR 1.102(e) are satisfied and the limit for the number of requests for the year has not been reached. The number of granted requests for prioritized examination under 37 CFR 1.102(e) is limited to a maximum of 12,000 per fiscal year. The Office posts statistics, including the number of granted prioritized examination requests, on its website at www.uspto.gov/aia_implementation/patents.jsp. In addition, the Office will post a message in EFS-Web if/when the number of granted requests is close to the limit. If the limit is reached, the Office will turn off the ability to file a request for prioritized examination in EFS-Web.
5. Additional Requirements
Additional requirements must be met depending on whether prioritized examination is requested upon filing of a new application (Track One), see subsection I.B. or incident to filing a request for continued examination (PE-RCE), see subsection I.C.
It is strongly recommended that applicants use the Office’s certification and request form PTO/AIA/424 to request prioritized examination, but the form is not required. The form is available on EFS-Web and on the Office’s Internet website at www.uspto.gov/patent/forms/forms. Failure to use form PTO/AIA/424 could result in the Office not recognizing the request or delays in processing the request. If applicant decides to use an applicant-created form for requesting prioritized examination, applicant’s form should be an equivalent to the Office’s form.
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).
B. Prioritized Examination for Application Filings under 35 U.S.C. 111(a) (Track One)
A newly filed patent application may be granted Track One prioritized examination status if it meets the general conditions in subsection I.A. above, and the additional following conditions:
1. Type of Application
The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application), filed under 35 U.S.C. 111(a) on or after September 26, 2011. The application must be filed via the Office’s electronic filing system (EFS-Web) if it is a utility application. Plant applications must be filed in paper. Due to the need to limit the number of applications in the prioritized examination program in its initial stages, applications entering the national stage under 35 U.S.C. 371 are not eligible at the time of entry; see subsection I.C. below for prioritized examination of national stage entries under 35 U.S.C. 371 in which as RCE has been filed. However, an applicant who has filed an international application may participate in the prioritized examination program by filing a by-pass continuation; i.e., a new application filed in the United States under 35 U.S.C. 111(a) that claims the benefit of the earlier international application under 35 U.S.C. 365(c), rather than entering the national stage under 35 U.S.C. 371. In such a case, it is not necessary that the earlier international application have been filed in English in order to request prioritized examination of the 111(a) application; however, a translation is required in accordance with 37 CFR 1.52(b)(1).
2. Disclosure and Inventor’s Oath or Declaration
A proper request for prioritized examination must include, on filing, a specification as prescribed by 35 U.S.C. 112 including at least one claim, and a drawing when necessary. The application must be filed with an executed application data sheet meeting the conditions specified in 1.53(f)(3)(i), or with the inventor’s oath or declaration (under 37 CFR 1.63 and 1.64 ) executed for each inventor. Such an application data sheet must include the legal name, mailing address, and residence (if not residing at the mailing address) for each inventor. Note that filing an application without the inventor’s oath or declaration requires payment of the surcharge set forth in 37 CFR 1.16(f).
3. Claims
The application must contain no more than four independent claims and no more than thirty total claims. If, at the time the request for prioritized examination is considered by the USPTO, the application does not meet this requirement, applicant will be notified of the deficiency through a decision on the request, which will provide one month for applicant to amend the claims consistent with the requirements for prioritized examination. In order to reduce Office processing and ensure that patent application publications are printed correctly, the Office strongly encourages applicants to file applications without any preliminary amendments.
4. Fees
The application must be filed with the basic filing fee, the search fee, the examination fee, any excess claims fees, and any application size fee. If applicable, any excess claims fees due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h), and any excess claim fee due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i), and any application size fee due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s), must be paid before Track One status will be granted. If, at the time the request for prioritized examination is considered by the USPTO, any of these three fees are required but have not been paid, applicant will be notified of the deficiency through a decision on the request. These three fees must be paid not later than one month from a first decision on the request for prioritized examination.
A nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) may be submitted together with a request for prioritized examination. However, the publication fee set forth in 37 CFR 1.18(d) still must be paid upon request for prioritized examination. If the application is not published, a refund of the publication fee may be requested as provided in subsection III below and in MPEP § 1126.
Color drawings may be filed with new nonprovisional utility patent applications under 35 U.S.C. 111(a) and in U.S. national stage applications under 35 U.S.C. 371 applications through EFS-Web; see MPEP § 502.05, subsection VIII. See also the EFS-Web legal framework at 74 FR 55200 (October 27, 2009). A petition is still required for entry of color drawings; see MPEP § 608.02 subsection VIII.
If applicant discovers that a required item has been inadvertently omitted from the application filing, a follow-on EFS-Web submission may be filed, but only if the follow-on EFS-Web submission is submitted on the same day that the utility application and the prioritized examination request form are filed. For example, if an inventor’s oath or declaration or the filing fees are inadvertently omitted when the application is filed via EFS-Web, then applicant may submit the inventor’s oath or declaration or the filing fees as a follow-on submission directly into the application on the same day as the filing date of the application. Applicants are also reminded that only registered users of EFS-Web can submit follow-on documents via EFS-Web and that follow-on documents are documents filed after the initial submission of the application. Thus, applicant would need to be a registered user of EFS-Web to submit such a follow-on document on the same day the application was filed. See also MPEP § 502.05, subsection III. D. for examples describing implications raised when applicant inadvertently omits an item when filing an application electronically via EFS-Web.
Applicants may receive a notice regarding informalities in their application (e.g., a notice to file corrected application papers because the application papers are not in compliance with 37 CFR 1.52) which will delay a decision on the request for prioritized examination; however, the request for prioritized examination may still be granted if the request is otherwise compliant with 37 CFR 1.102(e)(1). Any pre-examination notice from the Office of Patent Application Processing will delay a decision on the request for prioritized examination until after applicant has filed a complete and timely reply to the pre-examination notice. Any request for an extension of time, including an extension of time for the purpose of responding to a pre-examination notice (e.g., Notice to File Missing Parts), will cause the application to be ineligible for further treatment under the prioritized examination program. A request for an extension of time prior to the grant of prioritized examination status will prevent such status from being granted.
If the request for prioritized examination is dismissed, applicant can file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Applicant may not refile a request for Track One prioritized examination in order to correct a deficiency in the request because a proper request for Track One prioritized examination (i.e., for prioritized examination of a newly-filed utility or plant application under 35 U.S.C. 111(a) and not for an RCE) requires that the request be included upon filing.
C. Prioritized Examination of an Application for a Request for Continued Examination (PE-RCE)
A pending patent application in which a request for continued examination has been filed may be granted PE-RCE prioritized examination status under the following conditions:
1. Type of Application
The application must be a non-reissue utility or plant nonprovisional application filed under 35 U.S.C. 111(a), or that has entered the national stage under 35 U.S.C. 371.
2. Fees
The publication fee set forth in 37 CFR 1.18(d) must be paid for the application, either previously or with the request for prioritized examination. Note 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.
3. Timing of the Request
The PE-RCE request may be filed concurrently with, or subsequently to, the filing of a request for continued examination (RCE). However, the PE-RCE request must be filed before the mailing of the first Office action after the filing of the RCE. The conditions for filing an RCE are set forth in 37 CFR 1.114. Prosecution must be closed; i.e., the application is under appeal, the last Office action is a final action (37 CFR 1.113), a notice of allowance has been issued (37 CFR 1.311), or there has been an action that otherwise closes prosecution in the application. Any request for prioritized examination of an application in which there has been a request for continued examination is premised on the existence of a properly filed RCE. Prioritized examination will not be granted in an application where the RCE does not meet the requirements of 37 CFR 1.114.
4. Number of Requests
Only a single such request for prioritized examination for a request for continued examination may be granted in an application. The prioritized examination program permits a single request to be granted under 37 CFR 1.102(e)(1) upon filing a new application under 35 U.S.C. 111(a), and a single request to be granted under 37 CFR 1.102(e)(2) upon filing a request for continued examination under 37 CFR 1.114.
Applicant may file a petition under 37 CFR 1.181 if applicant believes a decision dismissing a PE-RCE request is not proper. Applicant should review the reason(s) stated in the decision dismissing the PE-RCE request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Alternatively, applicant may choose to correct the deficiencies in the PE-RCE request by filing a new PE-RCE request for that same RCE. The new PE-RCE request must include any required fees and be timely; i.e., it must be filed prior to the mailing of a first Office action after the filing of the RCE.
II. PROSECUTION OF AN APPLICATION UNDER PRIORITIZED EXAMINATION
The time periods set for reply in Office actions for applications undergoing prioritized examination will be the same as set forth in MPEP § 710.02(b). Where, however, an applicant files a petition for an extension of time to file a reply or files a request for suspension of action, the petition or request will be acted upon, but the prioritized examination of the application will be terminated. In addition, filing an amendment to the application which results in more than four independent claims, more than thirty total claims, or a multiple dependent claim will terminate the prioritized examination. Upon termination of prioritized examination, the application will be removed from the examiner’s special docket and placed on the examiner’s regular docket in accordance with its stage of prosecution.
The goal of the Office is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted. The final disposition for the twelve-month goal means that within twelve months from the date prioritized status has been granted that one of the following occur: (A) mailing of a notice of allowance; (B) mailing of a final Office action; (C) filing of a notice of appeal; (D) completion of examination as defined in 37 CFR 41.102; (E) filing of a request for continued examination; or (F) abandonment of the application. An application under prioritized examination, therefore, would not be accorded special status during appeal or interference before the Patent Trial and Appeal Board (PTAB), or after the filing of a request for continued examination. As noted above, the submission of an amendment resulting in more than four independent claims or more than thirty total claims is not prohibited, but simply terminates the prioritized examination. Thus, upon mailing of a final rejection (at which point prioritized examination is terminated), applicants may amend the claims to place them in independent form where dependent claims were found allowable, or add new claims, subject only to the limitations applicable to any application under final rejection. See 37 CFR 1.116. Similarly, upon mailing of a notice of allowance, applicants may submit amendments to the claims, again subject only to the limitations applicable to any application that has been allowed. See 37 CFR 1.312. A patent that issues will not contain any indication on its face that it was processed via prioritized examination.
III. REFUND OF FEES
If a request for prioritized examination is dismissed, the prioritized examination fee set forth in 37 CFR 1.17(c) will be refunded. This fee will be refunded automatically (if paid) without the need for applicant to request such a refund. The processing fee set forth in 37 CFR 1.17(i) will be retained to cover the cost of processing the request. In accordance with 37 CFR 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded. Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR 1.138(d). Furthermore, applicant may request a refund of the publication fee in accordance with MPEP § 1126 if the application is not published under 35 U.S.C. 122(b).
As the termination of prioritized examination does not cause the prioritized examination fee to have been paid by mistake or in an amount in excess of that required, the termination of prioritized examination will not entitle the applicant to a refund of the prioritized examination fee. See 35 U.S.C. 42(d) and 37 CFR 1.26(a).
708.02(c) Patent Prosecution Highway Program [R-07.2015]
The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating patent offices. Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.
The USPTO participates in the Global PPH and IP5 PPH pilot programs, and also has PPH agreements with several intellectual property offices that are not yet included in the Global PPH. See www.uspto.gov/patents/init_events/pph/index.jsp for details and forms to request participation in, and to petition to make an application special under, the PPH program.
708.03 Examiner Tenders Resignation [R-11.2013]
Whenever an examiner tenders his or her resignation, the supervisory patent examiner should see that the remaining time as far as possible is used in winding up prosecution in those applications with complex issues or involved records that the examiner is already familiar with (e.g., applications with RCEs and continuation applications) and getting as many of his or her amended cases as possible ready for final disposition.
709 Suspension of Action [R-10.2019]
37 C.F.R. 1.103 Suspension of action by the Office.
- (a) Suspension for cause. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph for good and sufficient cause. The Office will not suspend action if a reply by applicant to an Office action is outstanding. Any petition for suspension of action under this paragraph must specify a period of suspension not exceeding six months. Any petition for suspension of action under this paragraph must also include:
- (1) A showing of good and sufficient cause for suspension of action; and
- (2) The fee set forth in § 1.17(g), unless such cause is the fault of the Office.
- (b) Limited suspension of action in a continued prosecution application (CPA) filed under § 1.53(d). On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph in a continued prosecution application filed under § 1.53(d) for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for an application filed under § 1.53(d), specify the period of suspension, and include the processing fee set forth in § 1.17(i).
- (c) Limited suspension of action after a request for continued examination (RCE) under § 1.114. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph after the filing of a request for continued examination in compliance with § 1.114 for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for continued examination under § 1.114, specify the period of suspension, and include the processing fee set forth in § 1.17(i).
- (d) Deferral of examination. On request of the applicant, the Office may grant a deferral of examination under the conditions specified in this paragraph for a period not extending beyond three years from the earliest filing date for which a benefit is claimed under title 35, United States Code. A request for deferral of examination under this paragraph must include the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). A request for deferral of examination under this paragraph will not be granted unless:
- (1) The application is an original utility or plant application filed under § 1.53(b) or resulting from entry of an international application into the national stage after compliance with § 1.495;
- (2) The applicant has not filed a nonpublication request under § 1.213(a), or has filed a request under § 1.213(b) to rescind a previously filed nonpublication request;
- (3) The application is in condition for publication as provided in § 1.211(c); and
- (4) The Office has not issued either an Office action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
- (e) Notice of suspension on initiative of the Office. The Office will notify applicant if the Office suspends action by the Office on an application on its own initiative.
- (f) Suspension of action for public safety or defense. The Office may suspend action by the Office by order of the Director if the following conditions are met:
- (1) The application is owned by the United States;
- (2) Publication of the invention may be detrimental to the public safety or defense; and
- (3) The appropriate department or agency requests such suspension.
Suspension of action (37 CFR 1.103 ) should not be confused with extension of time for reply (37 CFR 1.136 ). It is to be noted that a suspension of action applies to an impending Office action by the examiner whereas an extension of time for reply applies to action by the applicant. In other words, the action cannot be suspended in an application which contains an outstanding Office action or requirement awaiting reply by the applicant. It is only the action by the examiner which can be suspended under 37 CFR 1.103.
Suspension of action under 37 CFR 1.103(a) - (d) at the applicant’s request will cause a reduction in patent term adjustment accumulated (if any) under 37 CFR 1.703. The reduction is equal to the number of days beginning on the date a request for suspension of action was filed and ending on the date of the termination of the suspension. See 37 CFR 1.704(c)(1).
I. REQUEST BY THE APPLICANT
| Request, 37 CFR Section | Requirement | Fee(s), 37 CFR Section | Maximum length of Suspension |
|---|---|---|---|
| 1.103(a) | Petition with a showing of good and sufficient cause. | 1.17(g) | 6 months |
| 1.103(b) | Request at the time of filing a CPA | 1.17(i) | 3 months |
| 1.103(c) | Request at the time of filing an RCE | 1.17(i) | 3 months |
| 1.103(d) | See below in "Deferral of Examination" | 1.17(i) & 1.18(d) | 3 yrs. from earliest filing date for which a benefit is claimed under Title 35. |
A. Petition Under 37 CFR 1.103(a) With a Showing of Good and Sufficient Cause
A request that action in an application be delayed will be granted only under the provisions of 37 CFR 1.103, which provides for "Suspension of Action." A petition for suspension of action under 37 CFR 1.103(a) must:
- (A) be presented as a separate paper;
- (B) be accompanied by the petition fee set forth in 37 CFR 1.17(g);
- (C) request a specific and reasonable period of suspension not greater than 6 months; and
- (D) present good and sufficient reasons why the suspension is necessary.
If the requirements of 37 CFR 1.103(a) are not met, applicants should expect that their applications, whether new or amended, will be taken up for action by the examiner in the order provided in MPEP § 708, Order of Examination.
A petition for suspension of action to allow applicant time to submit an information disclosure statement will be denied as failing to present good and sufficient reasons, since 37 CFR 1.97 provides adequate recourse for the timely submission of prior art for consideration by the examiner.
In new applications, the mere inclusion in the transmittal form letter of a request that action be delayed cannot be relied upon to avoid immediate action in the application. However, applicant may consider filing a request for deferral of examination under 37 CFR 1.103(d) (see below for the requirements). Applicants should be aware of the possibility of requesting suspension of action by the Office under 37 CFR 1.103(b) or (c) for a period not exceeding three months at the time of filing a continued prosecution application (CPA) under 37 CFR 1.53(d) if the application is a design application, or a request for continued examination (RCE) under 37 CFR 1.114. Note that effective July 14, 2003, CPA practice does not apply to utility and plant applications. Many Technology Center (TC) art units and examiners have short pendency to first action, and new applications may be taken up for action before preliminary amendments are filed in those applications. Where a preliminary amendment and petition to suspend action have been filed, it would be helpful to telephone the examiner in that regard to avoid having the amendment and the first Office action cross in the mail. The following form paragraphs should be used to notify the grant or denial of the petition under 37 CFR 1.103(a):
¶ 7.54 Suspension of Action, Applicant’s Request
Pursuant to applicant’s request filed on [1], action by the Office is suspended on this application under 37 CFR 1.103(a) for a period of [2] months. At the end of this period, applicant is required to notify the examiner and request continuance of prosecution or a further suspension. See MPEP § 709.
Examiner Note:
1. Maximum period for suspension is 6 months.
2. Only the Technology Center Director can grant second or subsequent suspensions. See MPEP § 1002.02(c). Such approval must appear on the Office letter.
¶ 7.56 Request for Suspension, Denied, Outstanding Office Action
Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(a), is denied as being improper. Action cannot be suspended in an application awaiting a reply by the applicant. See MPEP § 709.
A supplemental reply will be entered if it is filed within the period during which action is suspended by the Office under 37 CFR 1.103(a). See MPEP § 714.03(a) regarding supplemental reply.
B. Request for Suspension Under 37 CFR 1.103(b) or (c)
Applicants may request a suspension of action by the Office under 37 CFR 1.103(b) or (c) for a period not exceeding three months in a continued prosecution application (CPA) filed under 37 CFR 1.53(d) if the application is a design application, or in a continued examination (RCE) filed under 37 CFR 1.114. The request for suspension must be filed at the time of filing of the CPA or RCE.
A supplemental reply will be entered if it is filed within the period during which action is suspended by the Office under 37 CFR 1.103(c). See MPEP § 714.03(a) regarding supplemental reply.
1. Requirements
The Office will not grant the requested suspension of action unless the following requirements are met:
- (A) the request must be filed with the filing of a design CPA or an RCE (applicants may use the check box provided on the transmittal form PTO/SB/29 or PTO/SB/30, or submit the request on a separate paper);
- (1) if the request is filed with an RCE, the RCE must be in compliance with 37 CFR 1.114, i.e., the RCE must be accompanied by a submission and the fee set forth in 37 CFR 1.17(e). Note that the payment of the RCE filing fee may not be deferred and the request for suspension cannot substitute for the submission;
- (2) if the request is filed with a CPA, a filing date must be assigned to the CPA;
- (B) the request should specify the period of suspension in a whole number of months (maximum of 3 months). If the request specifies no period of suspension or a period of suspension that exceeds 3 months, the Office will assume that a 3-month suspension is requested; and
- (C) the request must include the processing fee set forth in 37 CFR 1.17(i).
2. Missing Parts for the CPA (Filing Date Granted)
If the Office assigns a filing date to the design CPA, the request for suspension will be processed, even if the CPA was not accompanied by the CPA basic filing fee, the search fee, and the examination fee. The suspension request acts to suspend a first Office action by the examiner but will not affect the processing of the CPA for a missing part. The applicant will be given a notice that provides a time period of 2 months from the date of the notification to pay the CPA basic filing fee, the search fee, the examination fee, and the surcharge set forth in 37 CFR 1.16(f). Applicant must pay the CPA basic filing fee, the search fee, the examination fee, and the surcharge within 2 months to avoid the abandonment of the CPA. Pursuant to applicant’s request for suspension, the action by the Office will be suspended on the CPA for the period requested by the applicant, starting on the filing date of the CPA.
3. Improper RCE or CPA (No Filing Date Granted)
If the CPA or the RCE is improper (e.g., a filing date was not accorded in the CPA or the RCE was filed without a submission or the RCE fee), the Office will not recognize the request for suspension, and action by the Office will not be suspended. A notice of improper CPA or RCE will be sent to applicant as appropriate. The time period set in the previous Office communication (e.g., a final Office action or a notice of allowance) continues to run from the mailing date of that communication. If applicant subsequently files another RCE, the request for suspension should be resubmitted to ensure that the Office processes the request for suspension properly. The request for suspension of action will not be processed until the Office accords a filing date to the CPA or receives a proper RCE in compliance with 37 CFR 1.114.
4. Improper Request for Suspension
If the CPA or the RCE is properly filed, but the request for suspension is improper (e.g., the request for suspension was filed untimely or without the processing fee set forth in 37 CFR 1.17(i) ), action by the Office will not be suspended on the application. The Office will process the CPA or RCE and place the application on the examiner’s docket. The examiner will notify the applicant of the denial of the request in the next Office communication using the following form paragraph:
¶ 7.56.01 Request for Suspension of Action under 37 CFR 1.103, Denied
Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(b) or (c) is denied as being improper. The request was (1) not filed at the time of filing a CPA or RCE, and/or (2) not accompanied by the requisite fee as set forth in 37 CFR 1.17(i). See MPEP § 709.
Examiner Note:
In bracket 1, insert the filing date of the request for suspension of action.
5. Proper Request for Suspension
If the CPA or the RCE and the request for suspension of action are proper, the Office’s technical support staff will process the CPA or RCE, and the request for suspension of action. A notification of the approval of the request for suspension will be sent to the applicant. The application will be placed in suspension status until the end of the suspension period. The suspension request acts to suspend a first Office action by the examiner. Once the suspension period has expired, the application will be placed on the examiner’s docket for further prosecution.
C. Request for Deferral of Examination Under 37 CFR 1.103(d)
In new applications, applicants may request a deferral of examination under 37 CFR 1.103(d) for a period not extending beyond three years from the earliest filing date for which a benefit is claimed under 35 U.S.C. 119(a)-(d), (e), (f), 120, 121, 365, or 386. The request must be filed before the Office issues an Office action under 35 U.S.C. 132 or a notice of allowance in the application. The suspension will start on the day that the Office grants the request for deferral of examination. Once the deferral of examination has been granted, the application will not be taken up for action by the examiner until the suspension period expires. For example, if an applicant files a request for deferral of examination under 37 CFR 1.103(d) for the maximum period permitted under the rule in an application that claims priority of a foreign application filed 1/3/00, the action by the Office on the application will be suspended and the application will automatically be placed in a regular new case status on the examiner’s docket on 1/4/03 (36 months from the effective filing date of the application, i.e., 1/3/00).
1. Requirements
Form PTO/SB/37 (reproduced at the end of this section) may be used to submit a request for deferral of examination under 37 CFR 1.103(d).
A request for deferral of examination under 37 CFR 1.103(d) must include:
- (A) a period of suspension, in a whole number of months, not extending beyond three years from the earliest effective filing date (if the request includes no period of suspension or a period that exceeds the maximum period permitted under the rule, i.e., beyond 3 years from the earliest effective filing date, the Office will assume that the maximum period is requested);
- (B) the publication fee set forth in 37 CFR 1.18(d); and
- (C) the processing fee set forth in 37 CFR 1.17(i).
The Office will not grant a deferral of examination unless the following conditions are met:
- (A) the application must be
- (1) an original utility or plant application filed under 37 CFR 1.53(b) or
- (2) an application resulting from entry of an international application into the national stage after compliance with 37 CFR 1.495 (the application cannot be a design application, a reissue application, or a CPA under 37 CFR 1.53(d) );
- (B) the application must be filed on or after November 29, 2000 (the effective date of the eighteen month publication provisions of the AIPA);
- (C) the applicant has not filed a nonpublication request under 37 CFR 1.213(a), or if a nonpublication request has been filed in the application, the applicant must file a request under 37 CFR 1.213(b) to rescind a previously filed nonpublication request (see the second check box on the form PTO/SB/37);
- (D) the application must be in condition for publication as provided in 37 CFR 1.211(c) (if the application has been forwarded to the Technology Center by the Office of Patent Application Processing (OPAP), the application can be assumed to be in condition for publication); and
- (E) the Office has not issued either an Office action under 35 U.S.C. 132 (e.g., a restriction, a first Office action on the merits, or a requirement under 37 CFR 1.105 ) or a notice of allowance under 35 U.S.C. 151.
2. Improper Request
If the request is improper, the following form paragraphs may be used to notify the applicant of the denial of the request:
¶ 7.56.02 Request for Deferral of Examination under 37 CFR 1.103(d), Denied
Applicant’s request filed on [1], for deferral of examination under 37 CFR 1.103(d) in the application is denied as being improper. [2]
See MPEP § 709.
Examiner Note:
1. In bracket 1, insert the filing date of the request for deferral of examination.
2. In bracket 2, insert the reason(s) for denying the request. For example, if appropriate insert --The applicant has not filed a request under 37 CFR 1.213(b) to rescind the previously filed nonpublication request--; --A first Office action has been issued in the application--; or --Applicant has not submitted a request for voluntary publication under 37 CFR 1.221 --.
3. Proper Request
A supervisory patent examiner’s approval is required for the grant of a deferral of examination in an application. If the request is proper, the following form paragraph may be used to notify applicant that the request for deferral has been granted:
¶ 7.54.01 Request for Deferral of Examination under 37 CFR 1.103(d), Granted
Applicant’s request filed on [1], for deferral of examination under 37 CFR 1.103(d) in the application has been approved. The examination of the application will be deferred for a period of [2] months.
Examiner Note:
1. In bracket 1, insert the filing date of the request for deferral of examination.
2. In bracket 2, insert the number of months for the deferral.
D. Termination of Suspension of Action
Once the request for suspension of action under 37 CFR 1.103 has been approved, action on the application will be suspended until the suspension period has expired, unless the applicant submits a request for termination of the suspension of action prior to the end of the suspension period. The request for termination of a suspension of action will be effective when an appropriate official of the Office takes action thereon. If the request for termination properly identifies the application and the period of suspension has not expired when the Office acts on the request, the Office will terminate the suspension and place the application on the examiner’s docket. An acknowledgment should be sent to the applicant using the following form paragraph:
¶ 7.54.02 Request for Termination of a Suspension of Action, Granted
Applicant’s request filed on [1], for termination of a suspension of action under 37 CFR 1.103, has been approved. The suspension of action has been terminated on the date of mailing this notice.
Examiner Note:
In bracket 1, insert the filing date of the request for termination of the suspension of action.
II. AT THE INITIATIVE OF THE OFFICE
Suspension of action at the initiative of the Office should be avoided, if possible, because such suspension will cause delays in examination, will increase pendency of the application, and may lead to a shortening of the effective patent term or, conversely, patent term extension, or adjustment, due to the suspension. Once a suspension of action has been initiated, it should be terminated immediately once the reason for initiating the suspension no longer exists, even if the suspension period has not expired.
37 CFR 1.103(e) provides that the Office will notify applicant if the Office suspends action in an application on its own initiative. Every suspension of action initiated by the Office will be limited to a time period of a maximum of 6 months. An examiner may grant an initial suspension of Office action on his or her own initiative, as in MPEP § 709.01 and MPEP Chapter 2300, for a maximum period of 6 months. A notification of suspension must be mailed to the applicant for each Office-initiated suspension of action, even for second or subsequent suspensions, and must include a suspension period (a maximum of 6 months). When the suspension period has expired, the examiner should take up action on the application or evaluate all possibilities for giving an action on the merits. For example, if a reference is still not available after waiting for six months, the examiner should try to find another source for the information or update the search to find another reference that can be used to make a rejection. If, in an extraordinary circumstance, a second or subsequent suspension is necessary, the examiner must obtain the TC director’s approval (see MPEP § 1003) and prepare another suspension notification with a suspension period (a maximum of 6 months). The notification for a second or subsequent suspension must be signed by the TC Director.
Suspension of action under 37 CFR 1.103(f) is decided by the TC Director of work group 3640.
The following form paragraphs should be used in actions relating to suspension of action at the initiative of the Office.
¶ 7.52 Suspension of Action, Awaiting New Reference
A reference relevant to the examination of this application may soon become available. Ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application.
Examiner Note:
1. Maximum period for suspension is six months.
2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003.
3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.
¶ 7.53 Suspension of Action, Possible Interference
All claims are allowable. However, due to a potential interference, ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application.
Examiner Note:
1. Maximum period for suspension is six months.
2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003.
3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.
709.01 Overlapping Applications by Same Applicant or Owned by Same Assignee [R-11.2013]
In general, examiners should not consider ex parte questions which are pending before the Office in inter partes proceedings involving the same applicant. This situation may arise when at least one application or patent of the same applicant that is involved in an interference, derivation proceeding, inter partes reexamination or inter partes review contains claims which overlap with claims of an application (original or reissue) under examination or with claims involved in an ex parte reexamination proceeding. An examiner should consult with the TC Quality Assurance Specialist to determine the appropriate course of action.
710 Period for Reply [R-07.2015]
35 U.S.C. 133 Time for prosecuting application.
Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.
35 U.S.C. 267 Time for taking action in Government applications.
Notwithstanding the provisions of sections 133 and 151, the Director may extend the time for taking any action to three years, when an application has become the property of the United States and the head of the appropriate department or agency of the Government has certified to the Director that the invention disclosed therein is important to the armament or defense of the United States.
See MPEP Chapter 1200 for period for reply when appeal is taken or court review sought.
Extension of time under 35 U.S.C. 267 is decided by the Technology Center Director of work group 3640.
710.01 Statutory Period [R-07.2015]
37 C.F.R. 1.135 Abandonment for failure to reply within time period.
- (a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
- (b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
- (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
The maximum statutory period for reply to an Office action is 6 months. 35 U.S.C. 133. Shortened periods are currently used in practically all cases. See MPEP § 710.02(b).
37 CFR 1.135 provides that if no reply is filed within the time set in the Office action under 37 CFR 1.134 or as it may be extended under 37 CFR 1.136, the application will be abandoned unless an Office action indicates otherwise.
37 CFR 1.135(b) specifies that: (A) the admission of, or refusal to admit, any amendment after final rejection, or any related proceedings, will not operate to save the application from abandonment; and (B) the admission of, or refusal to admit, any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
37 CFR 1.135(c) was amended to change the practice of providing a nonstatutory time limit (generally 1 month) during which an applicant may supply an omission to a previous reply. Under the current practice, the examiner may set a shortened statutory time period (generally 2 months) during which an applicant must supply the omission to the previous reply to avoid abandonment.
The prior practice under 37 CFR 1.135(c) was to set a time limit during which the applicant could supply the omission to the previous reply. Failure to supply the omission resulted in the abandonment of the application as of the due date for the previous reply. Filing a new application during the time limit, but beyond the due date for the previous reply, could have caused a loss of patent rights due to the lack of copendency between the applications.
37 CFR 1.135(c) now authorizes the examiner to accept a reply to a non-final Office action that is bona fide and is substantially complete but for an inadvertent omission as an adequate reply to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135. When a bona fide attempt to reply includes an inadvertent omission that precludes action on the merits of the application (e.g., an amendment is unsigned or improperly signed, or presents an amendment with additional claims so as to require additional fees pursuant to 37 CFR 1.16(h), (i), or (j) ), the examiner may consider that reply adequate to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135, and give the applicant a shortened statutory time period of 2 months to correct the omission (e.g., provide a duplicate paper or ratification, or submit the additional claims fees or cancel the claims so that no fee is due). The failure to timely supply the omission will result in abandonment under 35 U.S.C. 133 and 37 CFR 1.135. Extensions of time under 37 CFR 1.136(a) or (b) will be available, unless the action setting the shortened statutory period indicates otherwise.
When a bona fide attempt to reply includes an omission that does not preclude action on the merits of the application (e.g., a reply fails to address a rejection or objection), the examiner may waive the deficiency in the reply and act on the application. The examiner may repeat and make final the rejection, objection, or requirement that was the subject of the omission. Thus, a reply to a non-final Office action that is bona fide but includes an omission may be treated by: (A) issuing an Office action that does not treat the reply on its merits but requires the applicant to supply the omission to avoid abandonment; or (B) issuing an Office action that does treat the reply on its merits (and which can also require the applicant to supply the omission to avoid abandonment).
Finally, whether a 2-month shortened statutory time period is provided to the applicant to supply the omission to the previous reply is within the discretion of the examiner. Where the examiner determines that the omission was not inadvertent (e.g., the applicant is abusing the provisions of 37 CFR 1.135(c) to gain additional time to file a proper reply or to delay examination of the application), the examiner should notify the applicant of the omission in the reply and advise the applicant that the omission to the previous reply must be supplied within the period for reply to the prior action, including extensions of time under 37 CFR 1.136(a), if permitted. See also MPEP § 714.03.
710.01(a) Statutory Period, How Computed [R-08.2012]
The actual time taken for reply is computed from the date stamped or printed on the Office action to the date of receipt by the Office of applicant’s reply. No cognizance is taken of fractions of a day and applicant’s reply is due on the corresponding day of the month 6 months or any lesser number of months specified after the Office action.
For example, reply to an Office action with a 3-month shortened statutory period dated November 30 is due on the following February 28 (or 29 if it is a leap year), while a reply to an Office action dated February 28 is due on May 28 and not on the last day of May. Ex parte Messick, 7 USPQ 57 (Comm’r Pat. 1930).
A 1-month extension of time extends the time for reply to the date corresponding to the Office action date in the following month. For example, a reply to an Office action mailed on January 31 with a 3-month shortened statutory period would be due on April 30. If a 1-month extension of time were given, the reply would be due by May 31. The fact that April 30 may have been a Saturday, Sunday, or federal holiday has no effect on the extension of time. Where the period for reply is extended by some time period other than "1-month" or an even multiple thereof, the person granting the extension should indicate the date upon which the extended period for reply will expire.
When a timely reply is ultimately not filed, the application is regarded as abandoned after midnight of the date the period for reply expired. In the above example where May 31 is not a Saturday, Sunday, or federal holiday and no further extensions of time are obtained prior to the end of the 6-month statutory period, the application would be abandoned as of June 1. The fact that June 1 may be a Saturday, Sunday, or federal holiday does not change the abandonment date since the reply was due on May 31, a business day. See MPEP § 711.04(a) regarding the pulling and forwarding of abandoned applications.
A 30-day period for reply in the Office means 30 calendar days including Saturdays, Sundays, and federal holidays. However, if the period ends on a Saturday, Sunday, or federal holiday, the reply is timely if it is filed on the next succeeding business day. If the period for reply is extended, the time extended is added to the last calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or federal holiday.
The date of receipt of a reply to an Office action is given by the "Office date" stamp which appears on the reply paper.
In some cases the examiner’s Office action does not determine the beginning of a statutory reply period. In all cases where the statutory reply period runs from the date of a previous action, a statement to that effect should be included.
Since extensions of time are available pursuant to 37 CFR 1.136(a), it is incumbent upon applicants to recognize the date for reply so that the proper fee for any extension will be submitted. Thus, the date upon which any reply is due will normally be indicated only in those instances where the provisions of 37 CFR 1.136(a) are not available. See MPEP Chapter 2200 for reexamination proceedings.
710.02 Shortened Statutory Period and Time Limit Actions Computed [R-07.2015]
37 C.F.R. 1.136 Extensions of time.
- (a)
- (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless:
- (i) Applicant is notified otherwise in an Office action;
- (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title;
- (iii) The reply is a request for an oral hearing submitted pursuant to § 41.47(a) of this title;
- (iv) The reply is to a decision by the Patent Trial and Appeal Board pursuant to § 41.50 or § 41.52 of this chapter or to § 90.3 of this chapter; or
- (v) The application is involved in a contested case (§ 41.101(a) of this title) or a derivation proceeding (§ 42.4(b) of this title).
- (2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135 ), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of paragraph (a) of this section are available.
- (3) A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under § 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.
- (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless:
- (b) When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. Any request under this paragraph must be accompanied by the petition fee set forth in § 1.17(g).
- (c) If an applicant is notified in a "Notice of Allowability" that an application is otherwise in condition for allowance, the following time periods are not extendable if set in the "Notice of Allowability" or in an Office action having a mail date on or after the mail date of the "Notice of Allowability":
- (1) The period for submitting the inventor’s oath or declaration;
- (2) The period for submitting formal drawings set under § 1.85(c); and
- (3) The period for making a deposit set under § 1.809(c).
- (d) See § 1.550(c) for extensions of time in ex parte reexamination proceedings, § 1.956 for extensions of time in inter partes reexamination proceedings; §§ 41.4(a) and 41.121(a)(3) of this chapter for extensions of time in contested cases before the Patent Trial and Appeal Board; § 42.5(c) of this chapter for extensions of time in trials before the Patent Trial and Appeal Board; and § 90.3 of this chapter for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action.
37 CFR 1.136 implements 35 U.S.C. 41(a)(8) which directs the Director of the USPTO to charge fees for extensions of time to take action in patent applications.
Under 37 CFR 1.136 (35 U.S.C. 133 ) an applicant may be required to reply in a shorter period than 6 months, not less than 30 days. Some situations in which shortened periods for reply are used are listed in MPEP § 710.02(b).
In other situations, for example, the rejection of a copied patent claim, the examiner may require applicant to reply on or before a specified date. These are known as time limit actions and are established under authority of 35 U.S.C. 2 and 35 U.S.C. 3. Some situations in which time limits are set are noted in MPEP § 710.02(c). The time limit requirement should be typed in capital letters where required.
An indication of a shortened time for reply should appear prominently on the first page of all copies of actions in which a shortened time for reply has been set so that a person merely scanning the action can easily see it.
Shortened statutory periods are subject to the provisions of 37 CFR 1.136(a) unless applicant is notified otherwise in an Office action. See MPEP § 710.02(e) for a discussion of extensions of time. See Chapter 2200 for ex parte reexamination proceedings and Chapter 2600 for inter partes reexamination proceedings.
710.02(a) [Reserved]
710.02(b) Shortened Statutory Period: Situations in Which Used [R-07.2015]
Under the authority given him or her by 35 U.S.C. 133, the Director of the USPTO has directed the examiner to set a shortened period for reply to every action. The length of the shortened statutory period to be used depends on the type of reply required. Some specific cases of shortened statutory periods for reply are given below. These periods may be changed under special, rarely occurring circumstances.
A shortened statutory period may not be less than 30 days (35 U.S.C. 133 ).
The Patent Law Treaty (PLT), which entered into force with respect to the United States on December 18, 2013, provides for a time period of at least two months for replies to most Office actions and other notices. The Office has certain pilot programs that are not encompassed by this requirement of the PLT and set a time period of less than two months for reply.
2 MONTHS
- (A) Requirement for restriction or election of species only (no action on the merits) ...... MPEP §§ 809.02(a) and 817.
- (B) When a reply by an applicant for a nonfinal Office action is bona fide but includes an inadvertent omission, the examiner may set a 2 month shortened statutory time period to correct the omission .... MPEP §§ 710.01 and 714.03.
- (C) Winning party in a terminated interference to reply to an unanswered Office action ...... MPEP Chapter 2300.
- Where, after the termination of an interference proceeding, the application of the winning party contains an unanswered Office action, final rejection or any other action, the primary examiner notifies the applicant of this fact. In this case reply to the Office action is required within a shortened statutory period running from the date of such notice. See Ex parte Peterson, 49 USPQ 119, 1941 C.D. 8, 525 OG 3 (Comm’r Pat. 1941).
- (D) To reply to an Ex parte Quayle Office action ......... MPEP § 714.14.
- When an application is in condition for allowance, except as to matters of form, such as correction of the specification, a new oath, etc., the application will be considered special and prompt action taken to require correction of formal matters. Such action should include an indication on the Office Action Summary form PTOL-326 that prosecution on the merits is closed in accordance with the decision in Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935). A 2-month shortened statutory period for reply should be set.
- (E) Multiplicity rejection — no other rejection ........ MPEP § 2173.05(n).
3 MONTHS
To reply to any Office action on the merits.
PERIOD FOR REPLY RESTARTED
Where the citation of a reference is incorrect or an Office action contains some other defect and this error is called to the attention of the Office within 1 month of the mail date of the action, the Office will restart the previously set period for reply to run from the date the error is corrected, if requested to do so by applicant. See MPEP § 710.06.
710.02(c) Specified Time Limits: Situations in Which Used [R-11.2013]
There are certain situations in which the examiner specifies a time for the applicant to take some action, and the applicant’s failure to timely take the specified action results in a consequence other than abandonment. Situations in which a specified time limit for taking an action is set are as follows:
- (A) Where a member of the public files a petition under 37 CFR 1.14(a) for access to an application, the Office may give the applicant a specified time (usually 3 weeks) within which to state any objections to the granting of the petition for access and the reasons why it should be denied. The failure to timely reply will not affect the prosecution of the application (assuming that it is still pending), but will result in the Office rendering a decision on the petition for access without considering any objections by the applicant. See MPEP § 103.
- (B) Where an information disclosure statement complies with the requirements set forth in 37 CFR 1.97 (including the requirement for fees or statement under 37 CFR 1.97(e) based upon the time of filing), but part of the content requirement of 37 CFR 1.98 has been inadvertently omitted, the examiner may set a 1-month time limit for completion of the information disclosure statement. The failure to timely comply will not result in abandonment of the application, but will result in the information disclosure statement being placed in the application file with the noncomplying information not being considered. See MPEP § 609.05(a).
- (C) Where an application is otherwise allowable but contains a traverse of a restriction requirement, the applicant may be given a specified time (e.g., a 2-month time limit) to cancel claims to the nonelected invention or species or take other appropriate action (i.e., petition the restriction requirement under 37 CFR 1.144 ). The failure to timely file a petition under 37 CFR 1.144 (or cancel the claims to the nonelected invention or species) will not result in abandonment of the application, but will be treated as authorization to cancel the claims to the non-elected invention or species, and the application will be passed to issue. See 37 CFR 1.141 and 1.144, and MPEP §§ 821.01 and 821.04(a).
- (D) A portion of 37 CFR 41.202(c) provides that in suggesting claims for interference:
An examiner may require an applicant to add a claim to provoke an interference for an application subject to pre-AIA 35 U.S.C. 102(g). Failure to satisfy the requirement within a period (not less than one month) the examiner sets will operate as a concession of priority for the subject matter of the claim.
The failure to timely present the suggested claim will not result in abandonment of the application, but will be treated as a concession by the applicant of the priority of the subject matter of the claim. See MPEP Chapter 2300.
Where the failure to take the specified action may result in abandonment (e.g., filing a new complete appeal brief correcting the deficiencies in a prior appeal brief), a time period should be set for taking the specified action. Where the condition of the application requires that such action not be subject to extensions under 37 CFR 1.136, the action should specify that the provisions of 37 CFR 1.136 (or 1.136(a)) do not apply to the time period for taking action (i.e., a specified time limit should not be set simply to exclude the possibility of extending the period for reply under 37 CFR 1.136 ).
710.02(d) Difference Between Shortened Statutory Periods for Reply and Specified Time Limits [R-07.2015]
Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133:
- (A) The penalty attaching to failure to take a particular action within a specified time is a loss of rights in regard to the particular matter (e.g., the failure to timely copy suggested claims results in a disclaimer of the involved subject matter). On the other hand, a failure to reply within the set statutory period under 35 U.S.C. 133 results in abandonment of the entire application. Abandonment of an application is not appealable, but a petition to revive may be granted if the delay was unintentional (37 CFR 1.137(a) ).
- (B) As a specified time or time limit is not a shortened statutory period under 35 U.S.C. 133, the Office may specify a time for taking action (or a time limit) of less than the 30 day minimum specified in 35 U.S.C. 133. See MPEP § 103.
- (C) Where an applicant replies a day or two after the specified time, the delay may be excused by the examiner if satisfactorily explained. The examiner may use his or her discretion to request an explanation for the delay if the reason for the delay is not apparent from the reply. A reply 1 day late in an application carrying a shortened statutory period under 35 U.S.C. 133, no matter what the excuse, results in abandonment. Extensions of the statutory period under 35 U.S.C. 133 may be obtained under 37 CFR 1.136, provided the extension does not go beyond the 6-month statutory period from the date of the Office action (35 U.S.C. 133 ).
The 2-month time period for filing an appeal brief on appeal to the Patent Trial and Appeal Board (37 CFR 41.37(a) ) and the 1-month time period for filing a new appeal brief to correct the deficiencies in a defective appeal brief (37 CFR 41.37(d) ) are time periods, but are not (shortened) statutory periods for reply set pursuant to 35 U.S.C. 133. Thus, these periods are, unless otherwise provided, extendable by up to 5 months under 37 CFR 1.136(a), and, in an exceptional situation, further extendable under 37 CFR 1.136(b) (i.e., these periods are not statutory periods subject to the 6-month maximum set in 35 U.S.C. 133 ). In addition, the failure to file an appeal brief (or a new appeal brief) within the time period set in 37 CFR 41.37(a) (or (d)) results in dismissal of the appeal. The dismissal of an appeal results in abandonment, unless there is any allowed claim(s) (see MPEP § 1215.04), in which case the examiner should cancel the nonallowed claims and allow the application.
The 2-month time period for reply to A Notice to File Missing Parts of an Application is not identified on the Notice as a statutory period subject to 35 U.S.C. 133. Thus, extensions of time of up to 5 months under 37 CFR 1.136(a), followed by additional time under 37 CFR 1.136(b), when appropriate, are permitted.
710.02(e) Extension of Time [R-10.2019]
37 C.F.R. 1.136 Extensions of time.
- (a)
- (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless:
- (i) Applicant is notified otherwise in an Office action;
- (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title;
- (iii) The reply is a request for an oral hearing submitted pursuant to § 41.47(a) of this title;
- (iv) The reply is to a decision by the Patent Trial and Appeal Board pursuant to § 41.50 or § 41.52 of this chapter or to § 90.3 of this chapter; or
- (v) The application is involved in a contested case (§ 41.101(a) of this title) or a derivation proceeding (§ 42.4(b) of this title).
- (2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135 ), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of paragraph (a) of this section are available.
- (3) A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under § 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.
- (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless:
- (b) When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not affect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. Any request under this section must be accompanied by the petition fee set forth in § 1.17(g).
- (c) If an applicant is notified in a "Notice of Allowability" that an application is otherwise in condition for allowance, the following time periods are not extendable if set in the "Notice of Allowability" or in an Office action having a mail date on or after the mail date of the "Notice of Allowability" :
- (1) The period for submitting an inventor’s oath or declaration
- (2) The period for submitting formal drawings set under § 1.85(c); and
- (3) The period for making a deposit set under § 1.809(c).
- (d) See § 1.550(c) for extensions of time in ex parte reexamination proceedings, § 1.956 for extensions of time in inter partes reexamination proceedings; §§ 41.4(a) and 41.121(a)(3) of this chapter for extensions of time in contested cases before the Patent Trial and Appeal Board; § 42.5(c) of this chapter for extensions of time in trials before the Patent Trial and Appeal Board; and § 90.3 of this chapter for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action.
37 CFR 1.136 provides for two distinct procedures to extend the period for action or reply in particular situations. The procedure which is available for use in a particular situation will depend upon the circumstances. 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee as set forth in 37 CFR 1.17(a) up to 5 months after the end of the time period set to take action except:
- (A) where prohibited by statute,
- (B) where prohibited by one of the items listed in the rule, or
- (C) where applicant has been notified otherwise in an Office action.
The petition and fee must be filed within the extended time period for reply requested in the petition and can be filed prior to, with, or without the reply. The filing of the petition and fee will extend the time period to take action up to 5 months dependent on the amount of the fee paid except in those circumstances noted above. 37 CFR 1.136(a) will effectively reduce the amount of paperwork required by applicants and the Office since the extension will be effective upon filing of the petition and payment of the appropriate fee and without acknowledgment or action by the Office and since the petition and fee can be filed with or without the reply. 37 CFR 1.136(b) provides for requests for extensions of time upon a showing of sufficient cause when the procedure of 37 CFR 1.136(a) is not available. Although the petition and fee procedure of 37 CFR 1.136(a) will normally be available within 5 months after a set period for reply has expired, an extension request for cause under 37 CFR 1.136(b) must be filed during the set period for reply. Extensions of time in interference proceedings are governed by 37 CFR 41.4(a).
It should be very carefully noted that neither the primary examiner nor the Director of the USPTO has authority to extend the shortened statutory period unless a petition for the extension is filed. While the shortened period may be extended within the limits of the statutory 6 months period, no extension can operate to extend the time beyond the 6 months.
Any request under 37 CFR 1.136(b) for extension of time for reply must state a reason in support thereof and supply the fee under 37 CFR 1.17(g). Such extensions will only be granted for sufficient cause and must be filed prior to the end of the set period for reply.
Extensions of time with the payment of a fee pursuant to 37 CFR 1.136(a) are possible in reply to most Office actions of the examiner. Exceptions include:
- (A) all extensions in a reexamination proceeding (see 37 CFR 1.550(c) and MPEP § 2265 for ex parte reexamination, and 37 CFR 1.956 and MPEP § 2665 for inter partes reexamination);
- (B) all extensions during an interference proceeding (but not preparatory to an interference where a claim is suggested for interference);
- (C) those specific situations where an Office action states that the provisions of 37 CFR 1.136(a) are not applicable (e.g., reply to a notice of allowability, in reissue applications associated with litigation, or where an application in allowable condition has nonelected claims and time is set to cancel such claims); and
- (D) those limited instances where applicant is given a specified time limit to take certain actions.
The fees for extensions of time under 37 CFR 1.136(a) are set forth in 37 CFR 1.17(a) and are subject to a 50% reduction for persons or concerns qualifying as small entities. The fees itemized at 37 CFR 1.17(a) are cumulative. Thus, if an applicant has paid an extension fee in the amount set forth in 37 CFR 1.17(a)(l) for a 1-month extension of time and thereafter decides that an additional 1 month is needed, the proper fee would be the amount set forth in 37 CFR 1.17(a)(2) less the amount set forth in 37 CFR 1.17(a)(l) which was previously paid.
37 CFR 1.136(a)(3) provides that:
- (A) a written request may be submitted in an application that is an authorization to treat any concurrent or future reply that requires a petition for an extension of time under 37 CFR 1.136(a) to be timely, as incorporating a petition for extension of time for the appropriate length of time;
- (B) an authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under 37 CFR 1.136(a) to be timely; and
- (C) submission of the fee set forth in 37 CFR 1.17(a) will be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under 37 CFR 1.136(a) to be timely.
Accordingly, 37 CFR 1.136(a)(3) is a "safety net" to avoid a potential loss of patent rights for applicants who inadvertently omitted a petition, but who had:
- (A) previously filed a written request to treat a reply requiring an extension of time as incorporating a petition for such extension of time;
- (B) previously filed an authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees; or
- (C) submitted the fee set forth in 37 CFR 1.17(a) with the reply.
The Office strongly recommends including a written petition for any desired extension of time in reply to the Office action for which the extension was requested to avoid processing delays.
A proper petition may be only a few sentences such as
The applicant herewith petitions the Director of the United States Patent and Trademark Office to extend the time for reply to the Office action dated ____ for ____ month(s) from ____ to ____ . Submitted herewith is a check for $____ to cover the cost of the extension [Please Charge my deposit account number ____ , in the amount of $ ____ to cover the cost of the extension. Any deficiency or overpayment should be charged or credited to the above numbered deposit account.]
37 CFR 1.136(a)(2) provides, in part, that "[t]he date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee." Thus, a petition under 37 CFR 1.136(a) need not be accompanied by a reply (e.g., in situations in which the extension is necessary for copendency with a continuing application). 37 CFR 1.136(a)(2), however, clarifies that "[a] reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application" under 35 U.S.C. 133 and 37 CFR 1.135 (e.g., where the extension is obtained solely for the purpose of copendency with a continuing application, and no reply is filed, the application will become abandoned upon expiration of the so-extended period for reply).
While a petition for an extension of time under 37 CFR 1.136(a) must be filed within the extended period for reply, the petition need not be filed within the original shortened statutory period for reply. If a petition for an extension of time under 37 CFR 1.136(a) (with or without a reply) requests an insufficient period of extension such that the petition would be filed outside the so-extended period for reply, but the period for reply could be further extended under 37 CFR 1.136(a) such that the petition would be filed within the further extended period for reply, it is Office practice to simply treat the petition for extension of time as requesting the period of extension necessary to make the petition filed within the further extended period for reply if the petition or application contains an authorization to charge extension fees or fees under 37 CFR 1.17 to a deposit account. That is, in such situations a petition for an extension of time under 37 CFR 1.136(a) is simply construed as requesting the appropriate period of extension. For example, if a petition (and requisite fee) for a two-month extension of time containing an authorization to charge fee deficiencies to a deposit account are filed in an application four and one-half months after the date a notice of appeal was filed in that application, it is Office practice to treat the petition as requesting the period of extension (three months) necessary to make the petition filed within the extended period for reply. This practice applies even if no further reply (appeal brief or continued prosecution application (CPA) under 37 CFR 1.53(d) ) is filed in the application to be treated as a constructive petition for an extension of time under 37 CFR 1.136(a)(3).
To facilitate processing, any petition for an extension of time (or petition to revive under 37 CFR 1.137 ) in which a continuing application is filed in lieu of a reply should specifically refer to the filing of the continuing application and also should include an express abandonment of the prior application conditioned upon the granting of the petition and the granting of a filing date to the continuing application.
Applicants are cautioned that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application. This is because the petition for an extension of time (or constructive petition under 37 CFR 1.136(a)(3) ) must be directed toward and filed in the application to which it pertains in accordance with 37 CFR 1.4 and 1.5.
Where a reply is filed after the set period for reply has expired and no petition or fee accompanies it, the reply will not be accepted as timely until the petition (which may be a constructive petition under 37 CFR 1.136(a)(3) ) and the appropriate fee are submitted. For example, if an Office action sets a 3-month period for reply and applicant replies in the 4th month and includes only the petition for a 1-month extension of time, the reply is not acceptable until the fee is filed. If the fee is not filed until the 5th month, an additional fee for the 2nd month extension would also be required in order to render the reply timely.
An extension of time under 37 CFR 1.136 is not necessary when submitting a supplemental reply to an Office action if a complete first reply was timely filed in reply to the Office action.
When the provisions of 37 CFR 1.136(a) are not applicable, extensions of time for cause pursuant to 37 CFR 1.136(b) may be possible. Any such extension must be filed on or before the day on which the reply is due. The mere filing of such a request will not effect any extension. All such requests are to be decided by the Technology Center (TC) Director. No extension can operate to extend the time beyond the 6-month statutory period. Extensions of time under 37 CFR 1.136(b) (or 37 CFR 1.136(a) ) are not available to extend the time period set in a Notice of Allowability, or in an Office action having a mail date after the mail date of the Notice of Allowability, to submit an inventor’s oath or declaration under 37 CFR 1.63 and 1.64, to submit formal drawings, or to make a deposit of biological material.
If a request for extension of time under 37 CFR 1.136(b) is filed in duplicate and accompanied by a stamped return-addressed envelope, the Office will indicate the action taken on the duplicate and return it promptly in the envelope. Utilization of this procedure is optional on the part of applicant. In this procedure, the action taken on the request should be noted on the original and on the copy which is to be returned. The notation on the original, which becomes a part of the file record, should be signed by the person granting or denying the extension, and the name and title of that person should also appear in the notation on the copy which is returned to the person requesting the extension.
When the request is granted, no further action by the Office is necessary. When the request is granted in part, the extent of the extension granted will be clearly indicated on both the original and on the copy which is to be returned. When the request is denied, the reason for the denial will be indicated on both the original and on the copy which is to be returned or a formal decision letter giving the reason for the denial will be forwarded promptly after the mailing of the duplicate.
If the request for extension of time is granted, the due date is computed from the date stamped or printed on the action, as opposed to the original due date. See MPEP § 710.01(a). For example, a reply to an action with a 3-month shortened statutory period, dated November 30, is due on the following February 28 (or 29, if it is a leap year). If the period for reply is extended an additional month, the reply becomes due on March 30, not on March 28.
Hand-carried requests for extensions of time will no longer be accepted in the TCs. Hand-carried requests for extensions of time may only be delivered to the Customer Window, which is located at:
U.S. Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
Applicant should be advised promptly regarding action taken on the request for extension of time under 37 CFR 1.136(b) so that the file record will be complete.
Form paragraphs 7.98 or 7.98.01 may be used where a reply is filed late but an extension of time is possible.
¶ 7.98 Reply Is Late, Extension of Time Suggested
Applicant’s reply was received in the Office on [1], which is after the expiration of the period for reply set in the last Office action mailed on [2]. This application will become abandoned unless applicant obtains an extension of time to reply to the last Office action under 37 CFR 1.136(a). In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
Examiner Note:
Since the provisions of 37 CFR 1.136(a) do not apply to reexamination proceedings or to litigation related reissue applications, do not use this form paragraph in these cases.
¶ 7.98.01 Reply Is Late, Extension of Time Suggested, Pro Se
Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the above noted Office action. The application will become abandoned unless applicant obtains an extension of the period for reply set in the above noted Office action. An extension of the reply period may be obtained by filing a petition under 37 CFR 1.136(a). The petition must be accompanied by the appropriate fee as set forth in 37 CFR 1.17(a) (copy of current fee schedule attached). The date on which the reply, the petition, and the fee have been filed is the date of the reply and also the date for purposes of determining the period of extension and the corresponding amount of the fee due. The expiration of the time period is determined by the amount of the fee paid. Although 37 CFR 1.136(a) provides for payment of up to five months of extension, applicant is advised that in no case can any extension carry the date for reply to an Office action beyond the maximum period of SIX MONTHS set by statute in 35 U.S.C. 133.
Examiner Note:
Enclose a photocopy of current fee schedule with action so that applicant can determine the required fee.
I. FINAL REJECTION — TIME FOR REPLY
If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection. This procedure applies only to a first reply to a final rejection. The following language must be included by the examiner in each final rejection.
A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST REPLY IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE THREE-MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 CFR 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR REPLY EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION.
For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, if a petition for extension of time is granted, the due date for a reply is computed from the date stamped or printed on the Office action with the final rejection. See MPEP § 710.01(a). If the examiner, however, does not mail an advisory action until after the end of 3 months, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension of time fee may be calculated from the mailing date of the advisory action. In no event will the statutory period for reply expire later than 6 months from the mailing date of the final Office action.
See also MPEP § 706.07(f).
II. EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS AFTER FINAL REJECTION
Frequently, applicants request an extension of time, stating as a reason therefor that more time is needed in which to submit an affidavit. When such a request is filed after final rejection, the granting of the request for extension of time is without prejudice to the right of the examiner to question why the affidavit is now necessary and why it was not earlier presented. If applicant’s showing is insufficient, the examiner may deny entry of the affidavit, notwithstanding the previous grant of an extension of time to submit it. The grant of an extension of time in these circumstances serves merely to keep the application from becoming abandoned while allowing the applicant the opportunity to present the affidavit or to take other appropriate action. Moreover, prosecution of the application to save it from abandonment must include such timely, complete and proper action as required by 37 CFR 1.113. The admission of the affidavit for purposes other than allowance of the application, or the refusal to admit the affidavit, and any proceedings relative thereto, shall not operate to save the application from abandonment.
Implicit in the above practice is the fact that affidavits submitted after final rejection are subject to the same treatment as amendments submitted after final rejection. See 37 CFR 1.116(c).
Failure to file a reply during the shortened statutory period results in abandonment of the application.
Extensions of time to appeal to the courts under 37 CFR 90.3(c) are covered in MPEP § 1216.
III. NO EXTENSIONS OF TIME AFTER PAYMENT OF ISSUE FEE
The statutory (nonextendable) time period for payment of the issue fee is 3 months from the date of the Notice of Allowance (35 U.S.C. 151 ). In situations where informalities such as drawing corrections are outstanding at the time of allowance, applicants will be notified on the PTOL-37 (Notice of Allowability) of such informalities. Extensions of time under 37 CFR 1.136(a) or (b) are NOT available to correct such informalities. Any such informalities must be corrected and the issue fee and the publication fee, if required, must be paid within the 3-month period. 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. See 35 U.S.C. 115(f).
710.03 [Reserved]
710.04 Two Periods Running [R-08.2012]
There sometimes arises a situation where two different periods for reply are running against an application, the one limited by the regular statutory period, the other by the limited period set in a subsequent Office action. The running of the first period is not suspended nor affected by an ex parte limited time action or even by an appeal therefrom. For an exception involving suggested claims, see MPEP Chapter 2300.
710.04(a) Copying Patent Claims [R-08.2012]
Where, in an application in which there is an unanswered rejection of record, claims are copied from a patent and all of these claims are rejected there results a situation where two different periods for reply are running against the application. One period, the first, is the regular statutory period of the unanswered rejection of record, the other period is the limited period set for reply to the rejection (either first or final). The date of the last unanswered Office action on the claims other than the copied patent claims is the controlling date of the statutory period. See Ex parte Milton, 63 USPQ 132 (P.O. Super Exam. 1938). See also MPEP Chapter 2300 .
710.05 Period Ending on Saturday, Sunday, or a Federal Holiday [R-07.2015]
35 U.S.C. 21 Filing date and day for taking action.
*****
- (b) When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia the action may be taken, or the fee paid, on the next succeeding secular or business day.
37 C.F.R. 1.7 Times for taking action; Expiration on Saturday, Sunday, or Federal holiday.
- (a) Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by or under this part for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding business day which is not a Saturday, Sunday, or a Federal holiday. See § 90.3 of this chapter for time for appeal or for commencing civil action.
- (b) If the day that is twelve months after the filing date of a provisional application under 35 U.S.C. 111(b) and § 1.53(c) falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the period of pendency shall be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or a Federal holiday.
The federal holidays under 5 U.S.C. 6103(a) are New Year’s Day, January 1; Martin Luther King’s birthday, the third Monday in January; Washington’s Birthday, the third Monday in February; Memorial Day, the last Monday in May; Independence Day, July 4; Labor Day, the first Monday in September; Columbus Day, the second Monday in October; Veteran’s Day, November 11; Thanksgiving Day, the fourth Thursday in November; and Christmas Day, December 25. Whenever a federal holiday falls on a Sunday, the following day (Monday) is also a federal holiday. Exec. Order No. 11582, 36 FR 2957 (February 11, 1971); 5 U.S.C. 6103.
When a federal holiday falls on a Saturday, the preceding day, Friday, is considered to be a federal holiday and the U.S. Patent and Trademark Office will be closed for business on that day (5 U.S.C. 6103). Accordingly, any action or fee due on such a federal holiday Friday or Saturday is to be considered timely if the action is taken, or the fee paid, on the next succeeding day which is not a Saturday, Sunday, or a federal holiday.
Pursuant to 5 U.S.C. 6103(c), Inauguration Day (January 20, every 4 years) "is a legal public holiday for the purpose of statutes relating to pay and leave of employees . . ." employed in the District of Columbia and surrounding areas. It further provides that when Inauguration Day falls on a Sunday, the next day selected for the observance of the Inauguration is considered a legal public holiday for purposes of this subsection. No provision is made for an Inauguration Day falling on a Saturday.
When an amendment is filed a day or two later than the expiration of the period fixed by statute, care should be taken to ascertain whether the last day of that period was Saturday, Sunday, or a federal holiday and if so, whether the amendment was filed or the fee paid on the next succeeding day which is not a Saturday, Sunday, or a federal holiday.
An amendment received on such succeeding day which was due on Saturday, Sunday, or federal holiday is endorsed with the date of receipt. The Saturday, Sunday, or federal holiday is also indicated.
The period of pendency of a provisional application will be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or a federal holiday, if the day that is twelve months after the filing date of the provisional application under 35 U.S.C. 111(b) and 37 CFR 1.53(c) falls on Saturday, Sunday, or a federal holiday within the District of Columbia. See 35 U.S.C. 119(e)(3) and MPEP § 201.04.
710.06 Situations When Reply Period Is Reset or Restarted [R-08.2017]
Where the citation of a reference is incorrect or an Office action contains some other error that affects applicant’s ability to reply to the Office action and this error is called to the attention of the Office within 1 month of the mail date of the action, the Office will restart the previously set period for reply to run from the date the error is corrected, if requested to do so by applicant. If the error is brought to the attention of the Office within the period for reply set in the Office action but more than 1 month after the date of the Office action, the Office will set a new period for reply, if requested to do so by the applicant, to substantially equal the time remaining in the reply period. For example, if the error is brought to the attention of the Office 5 weeks after mailing the action, then the Office would set a new 2-month period for reply. The new period for reply must be at least 1 month and would run from the date the error is corrected. See MPEP § 707.05(g) for the manner of correcting the record where there has been an erroneous citation.
Where for any reason it becomes necessary to remail any action (MPEP § 707.13), applicant’s period for reply will be restarted to correspond to the remailing date of the action.
A supplementary action after a rejection explaining the references more explicitly or giving the reasons more fully, even though no further references are cited, establishes a new date from which the statutory period runs.
If the error in citation or other defective Office action is called to the attention of the Office after the expiration of the period for reply, the period will not be restarted and any appropriate extension fee will be required to render a reply timely. The Office letter correcting the error will note that the time period for reply remains as set forth in the previous Office action.
See MPEP §§ 505, 512, and 513 for U.S. Patent and Trademark Office practice on date stamping documents.
In the event that correspondence from the Office is received late (A) due to delays in the U.S. Postal Service, or (B) because the mail was delayed in leaving the USPTO (the postmark date is later than the mail date printed on the correspondence), applicants may petition to reset the period for reply, which petition shall be evaluated according to the guidelines which follow. Where the Office action involved in the petition was mailed by a Technology Center (TC), the authority to decide such petitions has been delegated to the TC Director. See Notice entitled "Petition to reset a period for response due to late receipt of a PTO action," 1160 OG 14 (March 1, 1994).
Where a Customer has registered as a participant in the e-Office Action program to receive email notifications of Office communications and the participant did not receive an email notification or the email notification is delivered a few days later than the mailroom/notification date, the participant should contact the Patent Electronic Business Center (Patent EBC) by telephone to request the Office take appropriate corrective action. If the participant contacts the Patent EBC within one month from the email date, the Office will reset the time period for reply to commence on the date the email notification was sent.
I. PETITIONS TO RESET A PERIOD FOR REPLY DUE TO LATE RECEIPT OF AN OFFICE ACTION
The Office will grant a petition to restart the previously set period for reply to an Office action to run from the date of receipt of the Office action at the correspondence address when the following criteria are met:
- (A) the petition is filed within 2 weeks of the date of receipt of the Office action at the correspondence address;
- (B) a substantial portion of the set reply period had elapsed on the date of receipt (e.g., at least 1 month of a 2- or 3-month reply period had elapsed); and
- (C) the petition includes (1) evidence showing the date of receipt of the Office action at the correspondence address (e.g., a copy of the Office action having the date of receipt of the Office action at the correspondence address stamped thereon, a copy of the envelope (which contained the Office action) having the date of receipt of the Office action at the correspondence address stamped thereon, etc.), and (2) a statement setting forth the date of receipt of the Office action at the correspondence address and explaining how the evidence being presented establishes the date of receipt of the Office action at the correspondence address.
There is no statutory requirement that a shortened statutory period of longer than 30 days to reply to an Office action be reset due to delay in the mail or in the Office. However, when a substantial portion of the set reply period had elapsed on the date of receipt at the correspondence address (e.g., at least 1 month of a 2- or 3-month period had elapsed), the procedures set forth above for late receipt of action are available. Where an Office action was received with less than 2 months remaining in a shortened statutory period of 3 months the period may be restarted from the date of receipt. Where the period remaining is between 2 and 3 months, the period will be reset only in extraordinary situations, e.g., complex Office action suggesting submission of comparative data.
II. PETITIONS TO RESET A PERIOD FOR REPLY DUE TO A POSTMARK DATE LATER THAN THE MAIL DATE PRINTED ON AN OFFICE ACTION
The Office will grant a petition to restart the previously set period for reply to an Office action to run from the postmark date shown on the Office mailing envelope which contained the Office action when the following criteria are met:
- (A) the petition is filed within 2 weeks of the date of receipt of the Office action at the correspondence address;
- (B) the reply period was for payment of the issue fee, or the reply period set was 1 month or 30 days; and
- (C) the petition includes (1) evidence showing the date of receipt of the Office action at the correspondence address (e.g., copy of the Office action having the date of receipt of the Office action at the correspondence address stamped thereon, etc.), (2) a copy of the envelope which contained the Office action showing the postmark date, and (3) a statement setting forth the date of receipt of the Office action at the correspondence address and stating that the Office action was received in the postmarked envelope.
The provisions of 37 CFR 1.8 and 1.10 apply to the filing of the above-noted petitions with regard to the requirement that the petition be filed within 2 weeks of the date of receipt of the Office action.
The showings outlined above may not be sufficient if there are circumstances that point to a conclusion that the Office action may have been delayed after receipt rather than a conclusion that the Office action was delayed in the mail or in the Office.
711 Abandonment of Patent Application [R-07.2015]
37 C.F.R. 1.135 Abandonment for failure to reply within time period.
- (a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
- (b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
- (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
37 C.F.R. 1.138 Express abandonment.
- (a) An application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment of the application may not be recognized by the Office before the date of issue or publication unless it is actually received by appropriate officials in time to act.
- (b) A written declaration of abandonment must be signed by a party authorized under § 1.33(b)(1) or (b)(3) to sign a paper in the application, except as otherwise provided in this paragraph. A registered attorney or agent, not of record, who acts in a representative capacity under the provisions of § 1.34 when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application.
- (c) An applicant seeking to abandon an application to avoid publication of the application (see § 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this section including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicant should expect that the petition will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication.
Abandonment may be either of the invention or of an application. This discussion is concerned with abandonment of the application for patent.
An abandoned application, in accordance with 37 CFR 1.135 and 1.138, is one which is removed from the Office docket of pending applications through:
- (A) formal abandonment
- (1) by the applicant,
- (2) by the attorney or agent of record , or
- (3) by a registered attorney or agent acting in a representative capacity under 37 CFR 1.34 when filing a continuing application; or
- (B) failure of applicant to take appropriate action within a specified time at some stage in the prosecution of the application.
711.01 Express or Formal Abandonment [R-10.2019]
The applicant or the attorney/agent of record, if any, can sign an express abandonment. It is imperative that the attorney or agent of record exercise every precaution in ascertaining that the abandonment of the application is in accordance with the desires and best interests of the applicant prior to signing a letter of express abandonment of a patent application. Moreover, special care should be taken to ensure that the appropriate application is correctly identified in the letter of abandonment.
A letter of abandonment properly signed becomes effective when an appropriate official of the Office takes action thereon. When so recognized, the date of abandonment may be the date of recognition or a later date if so specified in the letter itself. For example, where a continuing application is filed with a request to abandon the prior application as of the filing date accorded the continuing application, the date of the abandonment of the prior application will be in accordance with the request once it is recognized.
A letter of express abandonment or a petition under 37 CFR 1.138(c) for express abandonment to avoid publication of the application (see 37 CFR 1.211(a)(1) ) accompanied by the petition fee set forth in 37 CFR 1.17(h) may be:
- (A) mailed to Mail Stop Express Abandonment, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450; or
- (B) filed electronically using EFS-Web.
Since a petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication, applicants should transmit the petition electronically using EFS-Web in all instances where the projected publication date is less than 3 months from the date of the petition. This will increase the chance of such petition being received by the appropriate officials in sufficient time to recognize the abandonment and remove the application from the publication process. If the issue fee has been paid, the letter of express abandonment should be directed to the Office of Petitions instead of the Pre-Grant Publication Division and be accompanied by a petition to withdraw an application from issue under 37 CFR 1.313(c). See subsection "I. After Payment of Issue Fee."
Action in recognition of an express abandonment may take the form of an acknowledgment by the Publishing Division of the receipt of the express abandonment, indicating that it is in compliance with 37 CFR 1.138.
It is suggested that divisional applications be reviewed before filing to ascertain whether the prior application should be abandoned. Care should be exercised in situations such as these as the Office looks on express abandonments as acts of deliberation, intentionally performed.
Applications may be expressly abandoned as provided for in 37 CFR 1.138. When a letter expressly abandoning an application (not in issue) is received, the Office should acknowledge receipt thereof, and indicate whether it does or does not comply with the requirements of 37 CFR 1.138.
The filing of a request for a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application is considered to be a request to expressly abandon the prior application as of the filing date granted the continuing application.
If the letter expressly abandoning the application does comply with 37 CFR 1.138, the Office personnel should respond by using a "Notice of Abandonment" form PTO-1432, and by checking the appropriate box(es). If such a letter does not comply with the requirements of 37 CFR 1.138, a fully explanatory letter should be sent.
A letter of express abandonment which is not timely filed (because it was not filed within the period for reply), is not acceptable to expressly abandon the application. The letter of express abandonment should be placed in the application file but not formally entered.
The application should be pulled for abandonment after expiration of the maximum permitted period for reply (see MPEP § 711.04(a)) and applicant notified of the abandonment for failure to reply within the statutory period. See MPEP §§ 711.02 and 711.04(c).
An amendment canceling all of the claims is not an express abandonment. The Office will not enter any amendment that would cancel all of the claims in an application without presenting any new or substitute claims. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001). Such an amendment is regarded as nonresponsive and is not a bona fide attempt to advance the application to final action. The practice set forth in 37 CFR 1.135(c) does not apply to such amendment. Applicant should be notified as explained in MPEP §§ 714.03 to 714.05.
An attorney or agent not of record in an application may file a withdrawal of an appeal under 37 CFR 1.34 except in those instances where such withdrawal would result in abandonment of the application. In such instances the withdrawal of appeal is in fact an express abandonment.
I. AFTER PAYMENT OF ISSUE FEE
If a letter of express abandonment is being submitted in an allowed application after the payment of the issue fee, the express abandonment must be accompanied by a petition to withdraw from issue under 37 CFR 1.313(c) and the fee set forth in 37 CFR 1.17(h). Also see MPEP § 1308. The express abandonment may not be recognized by the Office unless it is actually received by appropriate officials in time to withdraw the application from issue. A petition under 37 CFR 1.313 will not be effective to withdraw the application from issue unless it is actually received and granted by the appropriate official before the date of issue. After the issue fee has been paid, the application will not be withdrawn upon petition by the applicant for any reason except those reasons listed in 37 CFR 1.313(c), which include express abandonment of the application. An application may be withdrawn from issue for express abandonment of the application in favor of a continuing application. The petition under 37 CFR 1.313(c) accompanied by the petition fee should be addressed to the Office of Petitions. If the petition and the letter of abandonment are received by appropriate officials in sufficient time to act on the petition and remove the application from the issue process, the letter of abandonment will be acknowledged by the Office of Data Management after the petition is granted. Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be:
- (A) mailed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450;
- (B) transmitted by facsimile transmission to (571) 273-0025; or
- (C) hand-carried to the Office of Petitions, Madison West, 7th Floor, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Office of Petitions at (571) 272-3282 for delivery assistance; or
- (D) submitted electronically by EFS-Web.
Applicants are strongly encouraged to either transmit by EFS-Web, or facsimile or hand-carry the petition to the Office of Petitions to allow sufficient time to process the petition and if the petition can be granted, withdraw the application from issue.
See MPEP §§ 711.05 and 1308. In cases where 37 CFR 1.313 precludes giving effect to an express abandonment, the appropriate remedy is a petition, with fee, under 37 CFR 1.183, showing an extraordinary situation where justice requires suspension of 37 CFR 1.313.
II. TO AVOID PUBLICATION OF APPLICATION
A petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication. The petition will be granted when it is recognized in sufficient time to avoid publication of the application. The petition will be denied when it is not recognized in time to avoid publication. Generally, a petition under 37 CFR 1.138(c) will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication. It is unlikely that a petition filed within four weeks of the projected date of publication will be effective to avoid publication. Also note that withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of an application under 35 U.S.C. 122(b). See 37 CFR 1.313(d).
III. TO OBTAIN REFUND OF SEARCH FEE AND EXCESS CLAIMS FEE
37 C.F.R. 1.138 Express abandonment.
*****
- (d) An applicant seeking to abandon an application filed under 35 U.S.C. 111(a) and § 1.53(b) on or after December 8, 2004, to obtain a refund of the search fee and excess claims fee paid in the application, must submit a declaration of express abandonment by way of a petition under this paragraph before an examination has been made of the application. The date indicated on any certificate of mailing or transmission under § 1.8 will not be taken into account in determining whether a petition under § 1.138(d) was filed before an examination has been made of the application. If a request for refund of the search fee and excess claims fee paid in the application is not filed with the declaration of express abandonment under this paragraph or within two months from the date on which the declaration of express abandonment under this paragraph was filed, the Office may retain the entire search fee and excess claims fee paid in the application. This two-month period is not extendable. If a petition and declaration of express abandonment under this paragraph are not filed before an examination has been made of the application, the Office will not refund any part of the search fee and excess claims fee paid in the application except as provided in § 1.26.
As provided in 37 CFR 1.138(d), refund of the search fee and excess claims fee paid in an application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) on or after December 8, 2004 may be obtained by submitting a petition and declaration of express abandonment before an examination has been made of the application.
A petition under 37 CFR 1.138(d) will be granted if it was filed before an examination has been made of the application and will be denied if it was not filed before an examination has been made of the application. This averts the situation in which an applicant files a declaration of express abandonment to obtain a refund of the search fee and excess claims fee, the request for a refund is not granted because the declaration of express abandonment was not filed before an examination has been made of the application, the applicant then wishes to rescind the declaration of express abandonment upon learning that the declaration of express abandonment was not filed before an examination has been made of the application, and the Office cannot revive the application (once the declaration of express abandonment is recognized) because the application was expressly and intentionally abandoned by the applicant.
An "examination has been made of the application" for purposes of 37 CFR 1.138(d) once an action (e.g., restriction or election of species requirement, requirement for information under 37 CFR 1.105, first Office action on the merits, notice of allowability or notice of allowance, or action under Ex parte Quayle, 1935 Dec. Comm’r Pat. 11 (1935)) is shown in the Patent Application Locating and Monitoring (PALM) system as having been counted. For purposes of 37 CFR 1.138(d), "before" means occurring earlier in time, in that if a petition under 37 CFR 1.138(d) is filed and an action is counted on the same day, the petition under 37 CFR 1.138(d) was not filed before an examination has been made of the application. In addition, the date indicated on any certificate of mailing or transmission under 37 CFR 1.8 is not taken into account in determining whether a petition under 37 CFR 1.138(d) was filed before an examination has been made of the application.
The PALM system maintains computerized contents records of all patent applications and reexamination proceedings. The PALM system will show a status higher than 031 once an action has been counted. If the status of an application as shown in PALM is higher than 031 before or on the day that the petition under 37 CFR 1.138(d) was filed, the petition under 37 CFR 1.138(d) will be denied and the search fee and excess claims fee will not be refunded except as provided in 37 CFR 1.26.
A petition under 37 CFR 1.138(d) may not be effective to stop publication of an application unless the petition under 37 CFR 1.138(d) is granted and the abandonment processed before technical preparations for publication of the application has begun. Technical preparations for publication of an application generally begin four months prior to the projected date of publication.
The Office recommends that petitions under 37 CFR 1.138(d) be submitted by EFS-Web. The use of form PTO/SB/24B (or PTO/AIA/24B), reproduced in MPEP § 711.01, subsection V., is recommended.
IV. APPLICATION IN INTERFERENCE
An express abandonment pursuant to 37 CFR 1.138 of an application involved in an interference under pre-AIA 35 U.S.C. 135 is considered an abandonment of the contest and it is construed as a request for entry of an adverse judgment against the applicant. See 37 CFR 41.127(b)(4).
V. FORMS FOR FILING EXPRESS ABANDONMENT
Form PTO/AIA/24 (or PTO/SB/24 for applications filed before September 16, 2012) may be used for filing a letter of express abandonment or a letter of express abandonment in favor of a continuing application. Form PTO/AIA/24A (or PTO/SB/24A for applications filed before September 16, 2012) may be used for filing a petition for express abandonment under 37 CFR 1.138(c) to avoid publication of the application. Form PTO/AIA/24B (or PTO/SB/24B for applications filed before September 16, 2012) may be used for filing a petition for express abandonment under 37 CFR 1.138(d) to obtain a refund of the search fee and excess claims fee.
711.02 Failure To Take Required Action During Statutory Period [R-07.2015]
37 CFR 1.135(a) specifies that an application becomes abandoned if applicant "fails to reply" to an office action within the fixed statutory period. This failure may result either from (A) failure to reply within the statutory period, or (B) insufficiency of reply, i.e., failure to file a "complete and proper reply, as the condition of the case may require" within the statutory period (37 CFR 1.135(b) ).
When an amendment is filed after the expiration of the statutory period, the application is abandoned and the remedy is to petition to revive it. The examiner should notify the applicant or attorney at once that the application has been abandoned by using Notice of Abandonment form PTOL-1432. The proper boxes on the form should be checked and the blanks for the dates of the proposed amendment and the Office action completed. The late amendment is placed in the file wrapper but not formally entered. See MPEP § 714.17.
Form paragraph 7.90 or 7.98.02 may also be used.
¶ 7.90 Abandonment, Failure to Reply
This application is abandoned in view of applicant’s failure to submit a proper reply to the Office action mailed on [1] within the required period for reply.
Examiner Note:
1. A letter of abandonment should not be mailed until after the period for requesting an extension of time under 37 CFR 1.136(a) has expired.
2. In pro se cases see form paragraph 7.98.02.
¶ 7.98.02 Reply Is Late, Petition To Revive Suggested, Pro Se
Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the last Office Action. Since no time remains for applicant to obtain an extension of the period for reply by filing a petition under 37 CFR 1.136(a), this application is abandoned. Applicant is advised that the abandonment of this application may only be overcome by filing a petition to revive under 37 CFR 1.137. A petition to revive may be appropriate if applicant’s failure to reply was unintentional, as set forth below.
A petition to revive an abandoned application on the grounds that the failure to reply was unintentional (37 CFR 1.137 ) must be accompanied by: (1) the required reply (which has been filed); (2) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional; (3) any terminal disclaimer required pursuant to 37 CFR 1.137(d); and (4) the $[3] petition fee as set forth in 37 CFR 1.17(m). No consideration to the substance of a petition will be given until this fee is received. The Director may require additional information where there is a question whether the delay was unintentional.
The required items and fees must be submitted promptly under a cover letter entitled "Petition to Revive."
Further correspondence with respect to this matter should be addressed as follows:
By mail:
Mail Stop Petition
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX:
571-273-8300
Attn: Office of Petitions
Telephone inquiries with respect to this matter should be directed to the Office of Petitions Staff at (571) 272-3282. For more detailed information, see MPEP § 711.03(c).
To pass on questions of abandonment, it is essential that the examiner know the dates that mark the beginning and end of the statutory period under varying situations. Applicant’s reply must reach the Office within the set shortened statutory period for reply dating from the date stamped or printed on the Office letter or within the extended time period obtained under 37 CFR 1.136. (See MPEP § 710 to § 710.06.)
For a petition to withdraw a holding of abandonment based upon failure to receive an Office action, see MPEP § 711.03(c).
711.02(a) Insufficiency of Reply [R-08.2012]
Abandonment may result from a situation where applicant’s reply is within the period for reply but is not fully responsive to the Office action. But see MPEP § 710.02(c). See also MPEP § 714.02 to § 714.04.
¶ 7.91 Reply Is Not Fully Responsive, Extension of Time Suggested
The reply filed on [1] is not fully responsive to the prior Office action because: [2]. Since the period for reply set forth in the prior Office action has expired, this application will become abandoned unless applicant corrects the deficiency and obtains an extension of time under 37 CFR 1.136(a).
The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. In no case may an applicant reply outside the SIX (6) MONTH statutory period or obtain an extension for more than FIVE (5) MONTHS beyond the date for reply set forth in an Office action. A fully responsive reply must be timely filed to avoid abandonment of this application.
Examiner Note:
1. In bracket 2, set forth why the examiner considers there to be a failure to take "complete and proper action" within the statutory period.
2. If the reply appears to be a bona fide attempt to respond with an inadvertent omission, do not use this form paragraph; instead use form paragraph 7.95.
711.02(b) Special Situations Involving Abandonment [R-07.2015]
The following situations involving questions of abandonment often arise, and should be specially noted:
- (A) Copying claims from a patent when not suggested by the U.S. Patent and Trademark Office does not constitute a reply to the last Office action and will not save the application from abandonment, unless the last Office action relied solely on the patent for the rejection of all the claims rejected in that action.
- (B) An application may become abandoned through withdrawal of, or failure to prosecute, an appeal to the Patent Trial and Appeal Board. See MPEP §§ 1215.01 to 1215.04.
- (C) An application may become abandoned through dismissal of appeal to the Court of Appeals for the Federal Circuit or civil action, where there was not filed prior to such dismissal an amendment putting the application in condition for issue or fully responsive to the Board’s decision. Abandonment results from failure to perfect an appeal as required by the Court of Appeals for the Federal Circuit. See MPEP §§ 1215.04 and 1216.01.
- (D) Where claims are suggested for interference near the end of the period for reply running against the application. See MPEP Chapter 2300.
- (E) Where a continued prosecution application (CPA) under 37 CFR 1.53(d) is filed. See MPEP §§ 201.06(d) and 711.01.
- (F) Prior to a decision by the Board, an application on appeal that has no allowed claims may become abandoned when a Request for Continued Examination (RCE) is improperly filed without the appropriate fee or a submission (37 CFR 1.114(d) ) in the application. The filing of an RCE will be treated as a withdrawal of the appeal by the applicant. See MPEP § 706.07(h), subsection X.
- (G) When a reply to a final Office action is outstanding, an application may become abandoned if an RCE is filed without a timely submission that meets the reply requirements of 37 CFR 1.111. The filing of an improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application. See MPEP § 706.07(h), subsection VI.
- (H) Prior to payment of the issue fee, an allowed application may become abandoned if an RCE is improperly filed without the appropriate fee or a submission in the application. The improper RCE will not operate to toll the running of the time period for payment of the issue fee. See MPEP § 706.07(h), subsection IX.
711.02(c) Termination of Proceedings [R-11.2013]
"Termination of proceedings" is an expression found in 35 U.S.C. 120. As there stated, a second application is considered to be copending with an earlier application if it is filed before
- (A) the patenting,
- (B) the abandonment of, or
- (C) termination of proceedings on the earlier application.
"Before" has consistently been interpreted, in this context, to mean "not later than."
In each of the following situations, proceedings are terminated:
- (A) When the issue fee is not paid and the application is abandoned for failure to pay the issue fee, proceedings are terminated as of the date the issue fee was due and the application is the same as if it were abandoned after midnight on that date (but if the issue fee is later accepted, on petition, the application is revived). See MPEP § 711.03(c).
- (B) If an application is in interference wherein all the claims present in the application correspond to the counts and the application loses the interference as to all the claims, then proceedings on that application are terminated as of the date appeal or review by civil action was due if no appeal or civil action was filed.
- (C) Proceedings are terminated in an application after decision by the Patent Trial and Appeal Board as explained in MPEP § 1214.06.
- (D) Proceedings are terminated after a decision by the court as explained in MPEP § 1216.01.
711.03 Reconsideration of Holding of Abandonment; Revival [R-08.2012]
When advised of the abandonment of his or her application, applicant may either ask for reconsideration of such holding, if he or she disagrees with it on the basis that there is no abandonment in fact; or petition for revival under 37 CFR 1.137.
711.03(a) Holding Based on Insufficiency of Reply [R-08.2012]
Applicant may deny that the reply was incomplete.
While the primary examiner has no authority to act upon an application in which no action by applicant was taken during the period for reply, he or she may reverse his or her holding as to whether or not an amendment received during such period was responsive and act on an application of such character which he or she has previously held abandoned. This is not a revival of an abandoned application but merely a holding that the application was never abandoned. See also MPEP § 714.03.
711.03(b) Holding Based on Failure To Reply Within Period [R-08.2012]
When an amendment reaches the U.S. Patent and Trademark Office after the expiration of the period for reply and there is no dispute as to the dates involved, no question of reconsideration of a holding of abandonment can be presented.
However, the examiner and the applicant may disagree as to the date on which the period for reply commenced to run or ends. In this situation, as in the situation involving sufficiency of reply, the applicant may take issue with the examiner and point out to him or her that his or her holding was erroneous.
711.03(c) Petitions Relating to Abandonment [R-10.2019]
37 C.F.R. 1.135 Abandonment for failure to reply within time period.
- (a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
- (b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
- (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
37 C.F.R. 1.137 Revival of abandoned application, or terminated or limited reexamination prosecution.
- (a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c).
- (b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:
- (1) The reply required to the outstanding Office action or notice, unless previously filed;
- (2) The petition fee as set forth in § 1.17(m);
- (3) Any terminal disclaimer (and fee as set forth in § 1.20(d) ) required pursuant to paragraph (d) of this section; and
- (4) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
- (c) Reply. In an application abandoned under § 1.57(a), the reply must include a copy of the specification and any drawings of the previously filed application. In an application or patent abandoned for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional utility or plant application filed on or after June 8, 1995, abandoned after the close of prosecution as defined in § 1.114(b), the required reply may also be met by the filing of a request for continued examination in compliance with § 1.114.
- (d) Terminal disclaimer.
- (1) Any petition to revive pursuant to this section in a design application must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. Any petition to revive pursuant to this section in either a utility or plant application filed before June 8, 1995, must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the lesser of:
- (i) The period of abandonment of the application; or
- (ii) The period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, 365(c), or 386(c) from the date on which the earliest such application was filed.
- (2) Any terminal disclaimer pursuant to paragraph (d)(1) of this section must also apply to any patent granted on a continuing utility or plant application filed before June 8, 1995, or a continuing design application, that contains a specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to the application for which revival is sought.
- (3) The provisions of paragraph (d)(1) of this section do not apply to applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995, to reissue applications, or to reexamination proceedings.
- (1) Any petition to revive pursuant to this section in a design application must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. Any petition to revive pursuant to this section in either a utility or plant application filed before June 8, 1995, must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the lesser of:
- (e) Request for reconsideration. Any request for reconsideration or review of a decision refusing to revive an abandoned application, or a terminated or limited reexamination prosecution, upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under:
- (1) The provisions of § 1.136 for an abandoned application;
- (2) The provisions of § 1.550(c) for a terminated ex parte reexamination prosecution, where the ex parte reexamination was filed under § 1.510; or
- (3) The provisions of § 1.956 for a terminated inter partes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the inter partes reexamination was filed under § 1.913.
- (f) Abandonment for failure to notify the Office of a foreign filing. A nonprovisional application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires publication of applications eighteen months after filing, may be revived pursuant to this section. The reply requirement of paragraph (c) of this section is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under this section will not operate to stay any period for reply that may be running against the application.
- (g) Provisional applications. A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section. Subject to the provisions of 35 U.S.C. 119(e)(3) and § 1.7(b), a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances.
37 C.F.R. 1.181 Petition to the Director.
- (a) Petition may be taken to the Director:
- (1) From any action or requirement of any examiner in the ex parte prosecution of an application, or in ex parte or inter partes prosecution of a reexamination proceeding which is not subject to appeal to the Patent Trial and Appeal Board or to the court;
- (2) In cases in which a statute or the rules specify that the matter is to be determined directly by or reviewed by the Director; and
- (3) To invoke the supervisory authority of the Director in appropriate circumstances. For petitions involving action of the Patent Trial and Appeal Board, see § 41.3 of this title.
*****
- (f) The mere filing of a petition will not stay any period for reply that may be running against the application, nor act as a stay of other proceedings. Any petition under this part not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely, except as otherwise provided. This two-month period is not extendable.
*****
I. PETITION TO WITHDRAW HOLDING OF ABANDONMENT
A petition to revive an abandoned application (discussed below) should not be confused with a petition from an examiner’s holding of abandonment. Where an applicant contends that the application is not in fact abandoned (e.g., there is disagreement as to the sufficiency of the reply, or as to controlling dates), a petition under 37 CFR 1.181(a) requesting withdrawal of the holding of abandonment is the appropriate course of action, and such petition does not require a fee. Where there is no dispute as to whether an application is abandoned (e.g., the applicant’s contentions merely involve the cause of abandonment), a petition under 37 CFR 1.137 (accompanied by the appropriate petition fee) is necessary to revive the abandoned application.
The procedure available for reviving an application that has become abandoned due to a failure to reply to an Office Action is a petition under 37 CFR 1.137(a) based on unintentional delay.
A. Petition To Withdraw Holding of Abandonment Based on Failure To Receive Office Action
In Delgar v. Schuyler, 172 USPQ 513 (D.D.C. 1971), the court decided that the Office should mail a new Notice of Allowance in view of the evidence presented in support of the contention that the applicant’s representative did not receive the original Notice of Allowance. Under the reasoning of Delgar, an allegation that an Office action was never received may be considered in a petition to withdraw the holding of abandonment. If adequately supported, the Office may grant the petition to withdraw the holding of abandonment and remail the Office action. That is, the reasoning of Delgar is applicable regardless of whether an application is held abandoned for failure to timely pay the issue fee (35 U.S.C. 151 ) or for failure to prosecute (35 U.S.C. 133 ).
A showing by the applicant’s representative may not be sufficient if there are circumstances that point to a conclusion the Office action may have been lost after receipt rather than a conclusion that the Office action was lost in the mail (e.g., if the practitioner has a history of not receiving Office actions).
Evidence of nonreceipt of an Office communication or action (e.g., Notice of Abandonment or an advisory action) other than that action to which reply was required to avoid abandonment would not warrant withdrawal of the holding of abandonment. Abandonment takes place by operation of law for failure to reply to an Office action or timely pay the issue fee, not by operation of the mailing of a Notice of Abandonment. See Lorenz v. Finkl, 333 F.2d 885, 889-90, 142 USPQ 26, 29-30 (CCPA 1964); Krahn v. Commissioner, 15 USPQ2d 1823, 1824 (E.D. Va. 1990); In re Application of Fischer, 6 USPQ2d 1573, 1574 (Comm’r Pat. 1988).
1. Showing of Nonreceipt Required of a Practitioner
The showing required to establish nonreceipt of an Office communication must include a statement from the practitioner describing the system used for recording an Office action received at the correspondence address of record with the USPTO. The statement should establish that the docketing system is sufficiently reliable. It is expected that the record would include, but not be limited to, the application number, attorney docket number, the mail date of the Office action and the due date for the response.
Practitioner must state that the Office action was not received at the correspondence address of record, and that a search of the practitioner’s record(s), including any file jacket or the equivalent, and the application contents, indicates that the Office action was not received. A copy of the record(s) used by the practitioner where the non-received Office action would have been entered had it been received is required.
A copy of the practitioner’s record(s) required to show non-receipt of the Office action should include the master docket for the firm. That is, if a three month period for reply was set in the nonreceived Office action, a copy of the master docket report showing all replies docketed for a date three months from the mail date of the nonreceived Office action must be submitted as documentary proof of nonreceipt of the Office action. If no such master docket exists, the practitioner should so state and provide other evidence such as, but not limited to, the following: the application file jacket; incoming mail log; calendar; reminder system; or the individual docket record for the application in question.
2. Showing of Nonreceipt Required of a Pro Se Applicant
When the petitioner is a pro se applicant, the Office understands the petitioner may not have developed a formal docket record system for tracking correspondence. Nevertheless, petitioner must provide some sort of showing explaining the manner in which petitioner receives mail from the USPTO, maintains files for patent matters, and treats mail received for such matter.
Specifically, petitioner must explain the system for keeping track of patent matters - where petitioner keeps the correspondence; where due dates are recorded; how petitioner knows replies are due, etc. In essence, petitioner must explain how he reminds himself of response due dates and shows that the due date for an Office action was not entered into that system. Petitioner should include any available documentary evidence of the mail received, covering a reasonable period after the mailing date of an Office action, to demonstrate non-receipt of an Office action. Petitioner should also provide the USPTO with copies of any records or other methods, which could serve as a reminder of the due date for a response to an Office action, and where petitioner would have entered the receipt date of the Office action if petitioner received it (for example, a copy of the outside of a file or a calendar maintained by petitioner), if these documents are available. Furthermore, petitioner must include a statement from himself, or any other person at the address who may have handled the Office action, indicating that a search was conducted of the location where the correspondence from the USPTO would have been kept; however, the Office action was not found. Lastly, petitioner must state that he was, in fact, residing at (or routinely checked) the correspondence address of record for a reasonable time after the mailing date of an Office action; the period when the Office action would have been received.
B. Petition To Withdraw Holding of Abandonment Based on Evidence That a Reply Was Timely Mailed or Filed
37 CFR 1.10(c) through 1.10(e) and 1.10(g) set forth procedures for petitioning the Director of the USPTO to accord a filing date to correspondence as of the date of deposit of the correspondence as Priority Mail Express®. A petition to withdraw the holding of abandonment relying upon a timely reply placed in Priority Mail Express® must include an appropriate petition under 37 CFR 1.10(c), (d), (e), or (g) (see MPEP § 513). When a paper is shown to have been mailed to the Office using the "Express Mail" procedures, the paper must be entered in PALM with the Priority Mail Express® date.
Similarly, applicants may establish that a reply was filed with a postcard receipt that properly identifies the reply and provides prima facie evidence that the reply was timely filed. See MPEP § 503. For example, if the application has been held abandoned for failure to file a reply to a first Office action, and applicant has a postcard receipt showing that an amendment was timely filed in response to the Office action, then the holding of abandonment should be withdrawn upon the filing of a petition to withdraw the holding of abandonment. When the reply is shown to have been timely filed based on a postcard receipt, the reply must be entered into PALM using the date of receipt of the reply as shown on the post card receipt.
Where a certificate of mailing under 37 CFR 1.8, but not a postcard receipt, is relied upon in a petition to withdraw the holding of abandonment, see 37 CFR 1.8(b) and MPEP § 512. As stated in 37 CFR 1.8(b)(3) the statement that attests to the previous timely mailing or transmission of the correspondence must be on a personal knowledge basis, or to the satisfaction of the Director of the USPTO. If the statement attesting to the previous timely mailing is not made by the person who signed the Certificate of Mailing (i.e., there is no personal knowledge basis), then the statement attesting to the previous timely mailing should include evidence that supports the conclusion that the correspondence was actually mailed (e.g., copies of a mailing log establishing that correspondence was mailed for that application). When the correspondence is shown to have been timely filed based on a certificate of mailing, the correspondence is entered into PALM with the actual date of receipt (i.e., the date that the duplicate copy of the papers was filed with the statement under 37 CFR 1.8 ).
37 CFR 1.8(b) also permits applicant to notify the Office of a previous mailing or transmission of correspondence and submit a statement under 37 CFR 1.8(b)(3) accompanied by a duplicate copy of the correspondence when a reasonable amount of time (e.g., more than one month) has elapsed from the time of mailing or transmitting of the correspondence. Applicant does not have to wait until the application becomes abandoned before notifying the Office of the previous mailing or transmission of the correspondence. Applicant should check the private Patent Application Information Retrieval (PAIR) system for the status of the correspondence before notifying the Office. See MPEP § 512.
C. Treatment of Untimely Petition To Withdraw Holding of Abandonment
37 CFR 1.181(f) provides that, inter alia, except as otherwise provided, any petition not filed within 2 months from the action complained of may be dismissed as untimely. Therefore, any petition (under 37 CFR 1.181 ) to withdraw the holding of abandonment not filed within 2 months of the mail date of a notice of abandonment (the action complained of) may be dismissed as untimely. 37 CFR 1.181(f).
Rather than dismiss an untimely petition to withdraw the holding of abandonment under 37 CFR 1.181(f), the Office may require a terminal disclaimer as a condition of granting an untimely petition to withdraw the holding of abandonment.
Where the record indicates that the applicant intentionally delayed the filing of a petition to withdraw the holding of abandonment, the Office may simply dismiss the petition as untimely (37 CFR 1.181(f) ) solely on the basis of such intentional delay in taking action in the application without further addressing the merits of the petition. Obviously, intentional delay in seeking the revival of an abandoned application precludes relief under 37 CFR 1.137(a) (discussed below).
1. Design Applications, Utility Applications Filed Before June 8, 1995, and Plant Applications Filed Before June 8, 1995
(a) Applicant Receives Notice of Abandonment
In any design application, any utility application filed before June 8, 1995, or any plant application filed before June 8, 1995, if applicant receives a notice of abandonment, any petition to withdraw the holding of abandonment that is not filed within two months of the mail date of the notice of abandonment will not (absent extraordinary circumstances) be treated on its merits unless accompanied by a terminal disclaimer under 37 CFR 1.321(a), and the required fee set forth in 37 CFR 1.20(d). The period to be disclaimed is the terminal part of the term of any patent granted on the application, or of any patent granted on any utility or plant application that claims the benefit of the filing date of the application under 35 U.S.C. 120, 121, or 365(c), equivalent to the period between:
- (A) the date that is two months after the mail date of the notice of abandonment; and
- (B) the filing date of a grantable petition to withdraw the holding of abandonment.
See MPEP § 711.03(c), subsection II.G.
(b) Applicant Does Not Receive Notice of Abandonment
In any design application, any utility application filed before June 8, 1995, or any plant application filed before June 8, 1995, if applicant never receives the notice of abandonment, any petition to withdraw the holding of abandonment that is not filed within twelve months from the date of applicant’s filing (or date of submission, if the correspondence was never received by the Office) of correspondence with the Office for which further action by the Office can reasonably be expected, will not (absent extraordinary circumstances) be treated on its merit unless accompanied by a terminal disclaimer under 37 CFR 1.321(a), and the required fee set forth in 37 CFR 1.20(d). The period to be disclaimed is the terminal part of the term of any patent granted thereon, or of any patent granted on any utility or plant application that claims the benefit of the filing date of the application under 35 U.S.C. 120, 121, or 365(c), equivalent to the period between:
- (A) the date that is twelve months from the date of applicant’s filing or submission of correspondence with the Office, for which further action by the Office can reasonably be expected; and
- (B) the filing date of a grantable petition to withdraw the holding of abandonment.
See MPEP § 711.03(c), subsection II.G.
2. Utility and Plant Applications Filed on or After June 8, 1995 but Before May 29, 2000
In utility and plant applications filed on or after June 8, 1995, but before May 29, 2000, a terminal disclaimer should not be required as a condition of granting an untimely petition to withdraw the holding of abandonment. However, the Office of Patent Legal Administration (OPLA) must be consulted in such situations if the holding of abandonment involves a period during: (A) appellate review by the Patent Trial and Appeal Board; (B) an interference or derivation proceeding under 35 U.S.C. 135, including any suspension due to an interference or derivation proceeding; or (C) which the application was in a sealed condition or prosecution was suspended due to a secrecy order under 35 U.S.C. 181. This is because it is necessary to effect (if appropriate) a reduction of patent term extension under the "due diligence" provisions of 37 CFR 1.701(d)(2).
3. Utility and Plant Applications Filed on or After May 29, 2000
In utility and plant applications filed on or after May 29, 2000, a terminal disclaimer should not be required as a condition of granting an untimely petition to withdraw the holding of abandonment. This is because any patent term adjustment is automatically reduced under the provisions of 37 CFR 1.704(c)(4) in applications subject to the patent term adjustment provisions of the American Inventors Protection Act of 1999 (AIPA) if a petition to withdraw a holding of abandonment is not filed within two months from the mailing date of the notice of abandonment, and if applicant does not receive the notice of abandonment, any patent term adjustment is reduced under the provisions of 37 CFR 1.704(a) by a period equal to the period of time during which the applicant "failed to engage in reasonable efforts to conclude prosecution" (processing or examination) of the application.
II. PETITIONS TO REVIVE AN ABANDONED APPLICATION, OR ACCEPT LATE PAYMENT OF ISSUE FEE
Effective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, amended the patent laws to implement the provisions of the Patent Law Treaty (PLT) in title II. Notable changes to the law included the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments. Section 201(b) of the PLTIA specifically added new 35 U.S.C. 27, providing that the Director may establish procedures to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing a patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner. The PLTIA eliminated the provisions of the patent statutes relating to revival of abandoned applications or acceptance of delayed maintenance fee payments on the basis of a showing of "unavoidable" delay.
35 U.S.C. 27 Revival of applications; reinstatement of reexamination proceedings.
The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing each patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.
37 CFR 1.137 provides for the revival of abandoned applications, or terminated or limited reexamination prosecution on the basis of unintentional delay for the failure:
- (A) to timely reply to an Office requirement in a provisional application;
- (B) to timely prosecute in a nonprovisional application;
- (C) to timely pay the issue fee for a design application;
- (D) to timely pay the issue fee for a utility or plant application; and
- (E) to provide copendency between the abandoned application and a subsequently filed application.
A petition under 37 CFR 1.137(a) requires:
- (A) the required reply, unless previously filed;
- (B) the petition fee as set forth in 37 CFR 1.17(m);
- (C) any terminal disclaimer (and fee as set forth in 37 CFR 1.20(d) ) required pursuant to 37 CFR 1.137(d); and
- (D) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional.
The Director of the USPTO may require additional information where there is a question whether the delay was unintentional.
A. Reply Requirement
Unlike a petition to withdraw the holding of abandonment, a petition to revive under 37 CFR 1.137 must be accompanied by, inter alia, the required reply. Generally, the required reply is the reply sufficient to have avoided abandonment, had such reply been timely filed. A petition for an extension of time under 37 CFR 1.136 and a fee for such an extension of time are not required to be included with the reply.
37 CFR 1.137(c) applies to the reply requirement for a petition under 37 CFR 1.137(a). In an application abandoned under 37 CFR 1.57(a), the reply must include a copy of the specification and any drawings of the previously filed application. In an application or patent abandoned for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional utility or plant application filed on or after June 8, 1995, abandoned after the close of prosecution as defined in 37 CFR 1.114(b), the required reply may also be met by the filing of a request for continued examination (RCE) in compliance with 37 CFR 1.114. See below for more details on the reply requirement in specific situations of abandonment.
1. 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)
In an application abandoned under 37 CFR 1.57(a), the required reply must include a copy of the specification and any drawings of the previously filed application. Although not required as a condition for revival, a certified copy of the previously filed application may be required for an application filed by reference. If the certified copy is required and is not filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17 are required. For more details regarding an application filed by reference under 35 U.S.C. 111(c) and 37 CFR 1.57(a), see MPEP § 601.01(a), subsection III.
2. Abandonment for Failure To Pay the Issue Fee or Publication Fee
In an application abandoned for failure to timely pay the issue fee, the required reply must include the issue fee (and any required publication fee).
Section 202(b)(6) of the PLTIA amended 35 U.S.C. 151 to provide that: (1) if it appears that an applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant; (2) the notice of allowance shall specify a sum, constituting the issue fee and any required publication fee, which shall be paid within three months thereafter; and (3) upon payment of this sum, the patent may issue, but if payment is not timely made, the application shall be regarded as abandoned. Under the changes to 35 U.S.C. 151 in the PLTIA, the sum specified in the notice of allowance will constitute the issue fee and any required publication fee, and the Office will proceed to issue a patent when the applicant pays the sum specified in the notice of allowance, regardless of the issue fee and/or publication fee in effect on the date the sum specified in the notice of allowance is paid.
Section 201(b) of the PLTIA specifically added new 35 U.S.C. 27, providing that the Director may establish procedures to revive an unintentionally abandoned application for a patent, accept an unintentionally delayed payment of the fee for issuing a patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.
35 U.S.C. 27 authorizes the acceptance of an "unintentionally delayed payment of the fee for issuing each patent." Thus, 35 U.S.C. 27 requires payment of the issue fee as a condition of reviving an application abandoned for failure to pay the issue fee. Therefore, the filing of a continuing application without payment of the issue fee is not an acceptable reply in an application abandoned for failure to pay the issue fee.
The issue fee due with the petition to revive is the issue fee specified in the notice of allowance. If the notice of allowance also specified a publication fee, then the publication fee must also be paid in the amount specified on the notice of allowance. An applicant may change the entity status with the filing of the petition to revive, if appropriate, and pay the petition fee in the new entity status amount, but the issue fee (and any publication fee) must be paid in the amount specified in the notice of allowance.
In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. Even if an application abandoned for failure to pay the publication fee is being revived solely for purposes of continuity with a continuing application, the petition to revive under 37 CFR 1.137 must include payment of the publication fee.
3. Abandonment for Failure To Provide Required Drawings
In an application abandoned for failure to provide required drawings, a petition to revive the application will be dismissed unless the required drawings are filed before or with the petition to revive the application.
4. Abandonment for Failure To Reply in a Nonprovisional Application
(a) Abandonment for Failure To Reply to a Non-Final Action
The required reply to a non-final action in a nonprovisional application abandoned for failure to prosecute may be either:
- (A) an argument or an amendment under 37 CFR 1.111;
- (B) the filing of a continuing application under 37 CFR 1.53(b) (or a continued prosecution application (CPA) under 37 CFR 1.53(d) if the application is a design application).
The grant of a petition under 37 CFR 1.137 is not a determination that any reply under 37 CFR 1.111 is complete. Where the proposed reply is to a non-final Office action, the petition may be granted if the reply appears to be bona fide. After revival of the application, the patent examiner may, upon more detailed review, determine that the reply is lacking in some respect. In this limited situation, the patent examiner should send out a letter giving a 2-month shortened statutory period under 37 CFR 1.135(c) for correction of the error or omission. Extensions of time under 37 CFR 1.136(a) are permitted. If applicant does not correct the omission within the time period set in the letter (including any extension), the application is again abandoned.
(b) Abandonment for Failure To Reply to a Final Action
A reply under 37 CFR 1.113 to a final action must include a request for continued examination (RCE) under 37 CFR 1.114 or cancellation of, or appeal from the rejection of, each claim so rejected. Accordingly, in a nonprovisional application abandoned for failure to reply to a final action, the reply required for consideration of a petition to revive must be:
- (A) a Notice of Appeal and appeal fee;
- (B) an amendment under 37 CFR 1.116 that cancels all the rejected claims or otherwise prima facie places the application in condition for allowance;
- (C) the filing of an RCE (accompanied by a submission that meets the reply requirements of 37 CFR 1.111 and the requisite fee) under 37 CFR 1.114 for utility or plant applications filed on or after June 8, 1995 (see paragraph (d) below); or
- (D) the filing of a continuing application under 37 CFR 1.53(b) (or a CPA under 37 CFR 1.53(d) if the application is a design application).
When a notice of appeal is the reply filed pursuant to 37 CFR 1.137(b)(1), the time period under 37 CFR 41.37 for filing the appeal brief will be set by the Director of the USPTO in the decision granting the petition.
An application subject to a final action in which a proposed amendment under 37 CFR 1.116 is filed as the required reply will normally be routed by the Office of Petitions to the Technology Center (TC) to determine whether a proposed amendment places the application in condition for allowance prior to granting any petition to revive such application. The examiner is instructed that if the reply places the application in condition for allowance, the examiner should use the typewriter tool in Adobe Acrobat to write in the margin of the reply "OK to enter upon revival." If the petition is otherwise grantable and the examiner indicates that the reply places the application in condition for allowance, the petition will be granted. If, on the other hand, the reply would not place the application in condition for allowance, the examiner is instructed to complete form PTOL-303 and return the form to the Office of Petitions with the application. Form PTOL-303 should not be mailed to the applicant by the examiner. In this situation, the Office of Petitions will not grant the petition. A copy of the form PTOL-303 is marked with the notation "Courtesy Copy" by the Office of Petitions. The courtesy copy is sent as an attachment with the decision on the petition. The advisory form PTOL-303 merely serves as an advisory notice to the Office of Petitions regarding the decision of the examiner on the amendment after final rejection.
(c) Abandonment for Failure To File an Appeal Brief
In those situations where abandonment occurred because of the failure to file an appeal brief, the reply required pursuant to 37 CFR 1.137(b)(1) must be either:
- (A) an appeal brief in compliance with 37 CFR 41.37(c);
- (B) the filing of an RCE accompanied by a submission and the requisite fee in compliance with 37 CFR 1.114 for utility or plant applications filed on or after June 8, 1995, abandoned after the close of prosecution as defined in 37 CFR 1.114(b) (see paragraph (d) below); or
- (C) the filing of a continuing application under 37 CFR 1.53(b) (or a CPA under 37 CFR 1.53(d) if the application is a design application).
(d) Filing an RCE as the Required Reply
For utility or plant applications abandoned for failure to reply to a final Office action or for failure to file an appeal brief, the required reply may be the filing of an RCE accompanied by a submission and the requisite fee. When an RCE is the reply filed pursuant to 37 CFR 1.137(b)(1) to revive such an application, the submission accompanying the RCE must be a reply responsive within the meaning of 37 CFR 1.111 to the last Office action. Consideration of whether the submission is responsive within the meaning of 37 CFR 1.111 to the last Office action is done without factoring in the "final" status of such action. The submission may be a previously filed amendment after final or a statement that incorporates by reference the arguments in a previously filed appeal or reply brief. See MPEP § 706.07(h), subsection II.
The petition may be granted if the submission appears to be a bona fide attempt to provide a complete reply to the last Office action. After revival of the application, the examiner may, upon a more detailed review, determine that the reply is lacking in some respect. In this limited situation, the examiner should send out a letter giving a 2-month shortened statutory period under 37 CFR 1.135(c) for correction of the error or omission. Extensions of time under 37 CFR 1.136(a) are permitted. If the applicant does not correct the omission within the time period set in the letter (including any extension), the application is again abandoned.
(e) A Continuing Application or RCE May Be Required by the Office
The Office may require the filing of a continuing application or an RCE (if the prosecution prior to abandonment was closed) (or request for further examination pursuant to 37 CFR 1.129(a) ) to meet the reply requirement of 37 CFR 1.137(b)(1) where, under the circumstances of the application, treating a reply under 37 CFR 1.111 or 1.113 would place an inordinate burden on the Office. Exemplary circumstances of when treating a reply under 37 CFR 1.111 or 1.113 may place an inordinate burden on the Office are where:
- (A) an application has been abandoned for an inordinate period of time;
- (B) an application file contains multiple or conflicting replies to the last Office action; or
- (C) the reply or replies submitted under 37 CFR 1.137(b)(1) ) are questionable as to compliance with 37 CFR 1.111 or 1.113.
5. Abandonment for Failure To Notify the Office of a Foreign Filing After the Submission of a Non-Publication Request
If an applicant makes a nonpublication request upon filing with the appropriate certifications, the utility or plant application filed on or after November 29, 2000 will not be published under 35 U.S.C. 122(b)(1). See 35 U.S.C. 122(b)(2)(B)(i). If an applicant makes a nonpublication request and then rescinds, pursuant to 35 U.S.C. 122(b)(2)(B)(ii), the nonpublication request before or on the date a counterpart application is filed in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication, the nonpublication request will be treated as annulled and the application will be treated as if the nonpublication request were never made. See MPEP §§ 1123 and 1124. An applicant who has made a nonpublication request, but who subsequently files an application directed to the invention disclosed in the U.S. application in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication before the nonpublication request is rescinded, must, in addition to the rescission, notify the Office of such filing within forty-five days after the date of such filing. The requirement in 35 U.S.C. 122(b)(2)(B)(iii) for notice of the foreign filing is in addition to any rescission of the nonpublication request under 35 U.S.C. 122(b)(2)(B)(ii). If an applicant files a counterpart application in a foreign country after having filed an application in the USPTO with a nonpublication request, filing a rescission of the nonpublication request under 35 U.S.C. 122(b)(2)(B)(ii) without also providing a notice of the foreign filing in a timely manner will result in the abandonment of the U.S. application under 35 U.S.C. 122(b)(2)(B)(iii). 37 CFR 1.137(f), however, provides that an application abandoned as a result of the failure to timely provide such a notice to the Office is subject to revival pursuant to 37 CFR 1.137 if the delay in submitting the notice was unintentional.
A nonprovisional application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires eighteen-month publication may be revived only on the basis of unintentional delay pursuant to 37 CFR 1.137. The reply requirement of 37 CFR 1.137(c) is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under 37 CFR 1.137 will not operate to stay any period for reply that may be running against the application. Since the Office cannot ascertain whether an application is abandoned under 35 U.S.C. 122(b)(2)(B)(iii), the Office may continue to process and examine the application until the Office is notified of applicant’s failure to meet the forty-five days notice requirement of 35 U.S.C. 122(b)(2)(B)(iii). Therefore, the filing of a petition under 37 CFR 1.137 to revive such an application will not operate to stay any period for reply that may be running against the application. Applicants may use form PTO/SB/64a to file a petition for revival under 37 CFR 1.137.
B. Petition Fee Requirement
35 U.S.C. 41(a)(7) provides that the Office shall charge $1,700.00 on filing each petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, or for the extension of the 12-month period for filing a subsequent application. 35 U.S.C. 41(a)(7) also provides that the Director may refund any part of the fee, in exceptional circumstances as determined by the Director. This provision permits the Office to refund (or waive) the fee specified in 35 U.S.C. 41(a)(7) in situations in which the failure to take the required action or pay the required fee was due to a widespread disaster, such as a hurricane, earthquake, or flood, in the manner that the Office would waive surcharges that are not required by statute. The "exceptional circumstances" provision does not permit applicants to request a refund on the basis of there being exceptional circumstances.
The phrase "[o]n filing" in 35 U.S.C. 41(a)(7) means that the petition fee is required for the filing (and not merely the grant) of a petition under 37 CFR 1.137. See H.R. Rep. No. 542, 97th Cong., 2d Sess. 6 (1982), reprinted in 1982 U.S.C.C.A.N. 770 ("[t]he fees set forth in this section are due on filing the petition"). Therefore, the Office: (A) will not refund the petition fee required by 37 CFR 1.17(m), regardless of whether the petition under 37 CFR 1.137 is dismissed or denied (unless there are exceptional circumstances as determined by the Director); and (B) will not reach the merits of any petition under 37 CFR 1.137 lacking the requisite petition fee.
C. Unintentional Delay
While the Office reserves the authority to require further information concerning the cause of abandonment and delay in filing a petition to revive, the Office relies upon the applicant’s duty of candor and good faith and accepts the statement that "the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(a) was unintentional" without requiring further information in the vast majority of petitions under 37 CFR 1.137(a). This is because the applicant is obligated under 37 CFR 11.18 to inquire into the underlying facts and circumstances when a practitioner provides this statement to the Office. In addition, providing an inappropriate statement in a petition under 37 CFR 1.137(a) to revive an abandoned application may have an adverse effect when attempting to enforce any patent resulting from the application. See Lumenyte Int’l Corp. v. Cable Lite Corp., Nos. 96-1011, 96-1077, 1996 U.S. App. LEXIS 16400, 1996 WL 383927 (Fed. Cir. July 9, 1996)(unpublished)(patents held unenforceable due to a finding of inequitable conduct in submitting an inappropriate statement that the abandonment was unintentional).
The Office is almost always satisfied as to whether "the entire delay…was unintentional" on the basis of statement(s) by the applicant or representative explaining the cause of the delay (accompanied at most by copies of correspondence relevant to the period of delay).
The legislative history of Public Law 97-247, § 3, 96 Stat. 317 (1982), reveals that the purpose of the unintentional delay revival provision is to permit the Office to have discretion to revive abandoned applications in appropriate circumstances, but places a limit on this discretion stating that "[u]nder this section a petition accompanied by [the requisite fee] would not be granted where the abandonment or the failure to pay the fee for issuing the patent was intentional as opposed to being unintentional or unavoidable." H.R. Rep. No. 542, 97th Cong., 2d Sess. 6-7 (1982), reprinted in 1982 U.S.C.C.A.N. 770-71. A delay resulting from a deliberately chosen course of action on the part of the applicant is not an "unintentional" delay within the meaning of 37 CFR 1.137.
Where the applicant deliberately permits an application to become abandoned (e.g., due to a conclusion that the claims are unpatentable, that a rejection in an Office action cannot be overcome, or that the invention lacks sufficient commercial value to justify continued prosecution), the abandonment of such application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as "unintentional" within the meaning of 37 CFR 1.137. See In re Application of G, 11 USPQ2d 1378, 1380 (Comm’r Pat. 1989). An intentional course of action is not rendered unintentional when, upon reconsideration, the applicant changes his or her mind as to the course of action that should have been taken. See In re Maldague, 10 USPQ2d 1477, 1478 (Comm’r Pat. 1988).
A delay resulting from a deliberately chosen course of action on the part of the applicant does not become an "unintentional" delay within the meaning of 37 CFR 1.137 because:
- (A) the applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office action;
- (B) the applicant does not consider the allowed or patentable claims to be of sufficient breadth or scope to justify the financial expense of obtaining a patent;
- (C) the applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining the patent;
- (D) the applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining the patent; or
- (E) the applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses.
Likewise, a change in circumstances that occurred subsequent to the abandonment of an application does not render "unintentional" the delay resulting from a previous deliberate decision to permit an application to be abandoned. These matters simply confuse the question of whether there was a deliberate decision not to continue the prosecution of an application with why there was a deliberate decision not to continue the prosecution of an application.
In order to expedite treatment, applicants filing a petition under 37 CFR 1.137 to revive an abandoned application are advised to include the statement "the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(a) was unintentional," even if applicant chooses to include a statement of the facts concerning the delay. Electronic petitions, that are automatically processed and immediately decided, may be filed using the Web-based ePetition process for the following types of petitions: (1) Petitions to Accept Late Payment of Issue Fee - Unintentional Late Payment (37 CFR 1.137(a)); (2) Petitions for Revival of an Application based on Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f) ); (3) Petitions for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(a) ); and (4) Petitions for Revival of an Abandoned Patent Application Abandoned Unintentionally (37 CFR 1.137(a) ) (For Cases Abandoned After 1st Action and Prior to Notice of Allowance). Applicants may use the forms provided by the Office (PTO/SB/64, PTO/SB/64a, or PTO/SB/64PCT). Additional information regarding the ePetition process is available from: www.uspto.gov/patents-application-process/applying-online/ epetition-resource-page.
Applicants may use the forms provided by the Office (PTO/SB/64, PTO/SB/64a, or PTO/SB/64PCT).
![Form PTO/SB/64. Petition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(b) [Page 1 of 2]](graphics/71103c-1.png "Form PTO/SB/64. Petition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(b) [Page 1 of 2]")
![Form PTO/SB/64. Petition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(b) [Page 2 of 2]](graphics/71103c-2.png "Form PTO/SB/64. Petition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(b) [Page 2 of 2]")
![Form PTO/SB/64a Petition for Revival of an Application for Patent Abandoned for Failure To Notify the Office of a Foreign or International Filing (37 CFR 1.137(f)). [Page 1 of 2]](graphics/71103c-3.png "Form PTO/SB/64a Petition for Revival of an Application for Patent Abandoned for Failure To Notify the Office of a Foreign or International Filing (37 CFR 1.137(f)). [Page 1 of 2]")
![Form PTO/SB/64a Petition for Revival of an Application for Patent Abandoned for Failure To Notify the Office of a Foreign or International Filing (37 CFR 1.137(f)). [Page 2 of 2]](graphics/71103c-4.png "Form PTO/SB/64a Petition for Revival of an Application for Patent Abandoned for Failure To Notify the Office of a Foreign or International Filing (37 CFR 1.137(f)). [Page 2 of 2]")
![Form PTO/SB/64/PCT Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Intentionally Under 37 CFR 1.137(b) [Page 1 of 2]](graphics/71103c-5.png "Form PTO/SB/64/PCT Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Intentionally Under 37 CFR 1.137(b) [Page 1 of 2]")
![Form PTO/SB/64/PCT Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b) [Page 2 of 2]](graphics/71103c-6.png "Form PTO/SB/64/PCT Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b) [Page 2 of 2]")
D. Delay Until the Filing of a Grantable Petition
There are three periods to be considered during the evaluation of a petition under 37 CFR 1.137:
- (A) the delay in reply that originally resulted in the abandonment;
- (B) the delay in filing an initial petition pursuant to 37 CFR 1.137 to revive the application; and
- (C) the delay in filing a grantable petition pursuant to 37 CFR 1.137 to revive the application.
As discussed above, the abandonment of an application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as "unintentional" within the meaning of 37 CFR 1.137, where the applicant deliberately permits the application to become abandoned. See Application of G, 11 USPQ2d at 1380. Likewise, where the applicant deliberately chooses not to seek or persist in seeking the revival of an abandoned application, or where the applicant deliberately chooses to delay seeking the revival of an abandoned application, the resulting delay in seeking revival of the abandoned application cannot be considered as "unintentional" within the meaning of 37 CFR 1.137. An intentional delay resulting from a deliberate course of action chosen by the applicant is not affected by:
- (A) the correctness of the applicant’s (or applicant’s representative’s) decision to abandon the application or not to seek or persist in seeking revival of the application;
- (B) the correctness or propriety of a rejection, or other objection, requirement, or decision by the Office; or
- (C) the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision not to seek or persist in seeking revival.
Obviously, delaying the revival of an abandoned application, by a deliberately chosen course of action, until the industry or a competitor shows an interest in the invention is the antithesis of an "unintentional" delay. An intentional abandonment of an application, or an intentional delay in seeking the revival of an abandoned application, precludes a finding of unavoidable or unintentional delay pursuant to 37 CFR 1.137. See Maldague, 10 USPQ2d at 1478.
The Office does not generally question whether there has been an intentional or otherwise impermissible delay in filing an initial petition pursuant to 37 CFR 1.137, when such petition is filed: (A) within 3 months of the date the applicant is first notified that the application is abandoned; and (B) within 1 year of the date of abandonment of the application. Thus, an applicant seeking revival of an abandoned application is advised to file a petition pursuant to 37 CFR 1.137 within 3 months of the first notification that the application is abandoned to avoid the question of intentional delay being raised by the Office (or by third parties seeking to challenge any patent issuing from the application).
Where a petition pursuant to 37 CFR 1.137 is not filed within 3 months of the date the applicant is first notified that the application is abandoned, the Office may consider there to be a question as to whether the delay was unintentional. In such instances the Office may require further information as to the cause of the delay between the date the applicant was first notified that the application was abandoned and the date a 37 CFR 1.137 petition was filed, and how such delay was "unintentional."
To avoid delay in the consideration of the merits of a petition under 37 CFR 1.137 in instances in which such petition was not filed within 3 months of the date the applicant was first notified that the application was abandoned, applicants should include a showing as to how the delay between the date the applicant was first notified by the Office that the application was abandoned and the filing of a petition under 37 CFR 1.137 was "unintentional."
Where a petition pursuant to 37 CFR 1.137 is not filed within 1 year of the date of abandonment of the application (note that abandonment takes place by operation of law, rather than by the mailing of a Notice of Abandonment), the Office may require:
- (A) further information as to when the applicant (or the applicant’s representative) first became aware of the abandonment of the application; and
- (B) a showing as to how the delay in discovering the abandoned status of the application occurred.
To avoid delay in the consideration of the merits of a petition under 37 CFR 1.137 in instances in which such petition was not filed within 1 year of the date of abandonment of the application, applicants should include:
- (A) the date that the applicant first became aware of the abandonment of the application; and
- (B) a showing as to how the delay in discovering the abandoned status of the application occurred.
Applicant’s failure to carry the burden of proof to establish that the "entire" delay was "unintentional" may lead to the denial of a petition under 37 CFR 1.137, regardless of the circumstances that originally resulted in the abandonment of the application.
E. Party Whose Delay Is Relevant
The question under 37 CFR 1.137 is whether the delay on the part of the party having the right or authority to reply to avoid abandonment (or not reply) was unintentional. When the applicant assigns the entire right, title, and interest in an invention to a third party (and thus does not retain any legal or equitable interest in the invention), the applicant’s delay is irrelevant in evaluating whether the delay was unintentional. See Kim v. Quigg, 718 F. Supp. 1280, 1284, 12 USPQ2d 1604, 1607-08 (E.D. Va. 1989). When an applicant assigns the application to a third party (e.g., the inventor/applicant’s employer), and the third party decides not to file a reply to avoid abandonment, the applicant’s actions, inactions or intentions are irrelevant under 37 CFR 1.137, unless the third party has reassigned the application to the applicant prior to the due date for the reply. Id.
Likewise, where the applicant permits a third party (whether a partial assignee, licensee, or other party) to control the prosecution of an application, the third party’s decision whether or not to file a reply to avoid abandonment is binding on the applicant. See Winkler, 221 F. Supp. at 552, 138 USPQ at 667. Where an applicant enters an agreement with a third party for the third party to take control of the prosecution of an application, the applicant will be considered to have given the third party the right and authority to prosecute the application to avoid abandonment (or not prosecute), unless, by the express terms of the contract between applicant and the third party, the third party is conducting the prosecution of the application for the applicant solely in a fiduciary capacity. See Futures Technology Ltd. v. Quigg, 684 F. Supp. 430, 431, 7 USPQ2d 1588, 1589 (E.D. Va. 1988). Otherwise, the applicant will be considered to have given the third party unbridled discretion to prosecute (or not prosecute) the application to avoid abandonment, and will be bound by the actions or inactions of such third party.
F. Burden of Proof To Establish Unintentional Delay
37 CFR 1.137(b)(4) requires that a petition under 37 CFR 1.137 must be accompanied by a statement that the entire delay in providing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional, but also provides that "[t]he Director may require additional information where there is a question whether the delay was unintentional." While the Office will generally require only the statement that the entire delay in providing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137 was unintentional, the Office may require an applicant to carry the burden of proof to establish that the delay from the due date for the reply until the filing of a grantable petition was unintentional within the meaning of 35 U.S.C. 27 and 37 CFR 1.137 where there is a question whether the entire delay was unintentional. See Application of G, 11 USPQ2d at 1380.
G. Terminal Disclaimer Requirement
37 CFR 1.137(d) requires that a petition under 37 CFR 1.137 be accompanied by a terminal disclaimer (and fee), regardless of the period of abandonment, in:
- (A) a design application;
- (B) a nonprovisional utility application (other than a reissue application) filed before June 8, 1995; or
- (C) a nonprovisional plant application (other than a reissue application) filed before June 8, 1995.
In addition, a terminal disclaimer (and fee) is also required for a utility or plant application filed on or after June 8, 1995, but before May 29, 2000, where the application became abandoned (1) during appeal, (2) during interference, or (3) while under a secrecy order. The reason being that utility and plant patents issuing on applications filed on or after June 8, 1995, but before May 29, 2000, are eligible for the patent term extension under former 35 U.S.C. 154(b) (as a result of the Uruguay Round Agreements Act (URAA)). See 35 U.S.C. 154(b) (1999); see also 37 CFR 1.701. If such an application is abandoned (1) during appeal, (2) during interference, or (3) while under a secrecy order, the patentee of a patent issuing from such an application is eligible for patent term extension for the entire period of abandonment. The requirement for a terminal disclaimer for these situations will make certain that any patent term extension obtained for the period of abandonment while the application is under appeal, interference, or a secrecy order will be dedicated to the public. For utility and plant applications filed on or after May 29, 2000, a terminal disclaimer (and fee) is not required since the period of abandonment is reduced from the patent term adjustment pursuant to 37 CFR 1.704.
The terminal disclaimer submitted in a design application must dedicate to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. The terminal disclaimer submitted in either a utility or plant application filed before June 8, 1995 must dedicate to the public a terminal part of the term of any patent granted thereon equivalent to the lesser of: (1) the period of abandonment of the application; or (2) the period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on which the earliest such application was filed. The terminal disclaimer must also apply to any patent granted on any continuing utility or plant application filed before June 8, 1995, or any continuing design application, entitled under 35 U.S.C. 120, 121, or 365(c) to the benefit of the filing date of the application for which revival is sought. The terminal disclaimer requirement of 37 CFR 1.137(d) does not apply to (A) applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995, (B) reissue applications, or (C) reexamination proceedings.
The Office cannot determine (at the time a petition to revive is granted) the period disclaimed (i.e., which period is lesser: the period of abandonment of the application, or the period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on which the earliest such application was filed). Therefore, the Office will not indicate the period disclaimed under 37 CFR 1.137(d) in its decision granting a petition to revive an abandoned application.
The filing of a terminal disclaimer is not a substitute for unintentional delay. See Application of Takao, 17 USPQ2d at 1159. The requirement that the entire delay have been unintentional (37 CFR 1.137 ) is distinct from the requirement for a terminal disclaimer. Therefore, the filing of a terminal disclaimer cannot excuse an intentional delay in filing a petition or renewed petition to revive an abandoned application. Likewise, an unintentional delay in filing a petition or renewed petition to revive an abandoned application will not warrant waiver of the terminal disclaimer requirement of 37 CFR 1.137(d).
In the event that an applicant considers the requirement for a terminal disclaimer to be inappropriate under the circumstances of the application at issue, the applicant should file a petition under 37 CFR 1.183 (and petition fee) to request a waiver of this requirement of 37 CFR 1.183. Such a petition may request waiver of this requirement in toto, or to the extent that such requirement exceeds the period considered by applicant as the appropriate period of disclaimer. The grant of such a petition, however, is strictly limited to situations wherein applicant has made a showing of an "extraordinary situation" in which "justice requires" the requested relief. An example of such a situation is when the abandonment of the application caused no actual delay in prosecution (e.g., an application awaiting decision by the Board of Appeals and Interferences during period of abandonment).
See MPEP § 1490 for additional information pertaining to terminal disclaimers.
H. Request for Reconsideration
37 CFR 1.137(e) requires that any request for reconsideration or review of a decision refusing to revive an abandoned application must be filed within 2 months of the decision refusing to revive or within such time as set in the decision. 37 CFR 1.137(e) further provides that, unless a decision indicates otherwise, this time period for requesting reconsideration or review may be extended under the provisions of 37 CFR 1.136.
37 CFR 1.137(e) specifies a time period within which a renewed petition pursuant to 37 CFR 1.137 must be filed to be considered timely. Where an applicant files a renewed petition, request for reconsideration, or other petition seeking review of a prior decision on a petition pursuant to 37 CFR 1.137 outside the time period specified in 37 CFR 1.137(e), the Office may require, inter alia, a specific showing as to how the entire delay was "unintentional." As discussed above, a delay resulting from the applicant deliberately choosing not to persist in seeking the revival of an abandoned application cannot be considered "unintentional" within the meaning of 37 CFR 1.137, and the correctness or propriety of the decision on the prior petition pursuant to 37 CFR 1.137, the correctness of the applicant’s (or the applicant’s representative’s) decision not to persist in seeking revival, the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision to not persist in seeking revival are immaterial to such intentional delay caused by the deliberate course of action chosen by the applicant.
I. Provisional Applications
37 CFR 1.137 is applicable to a provisional application abandoned for failure to reply to an Office requirement. A petition under 37 CFR 1.137(a) must be accompanied by any outstanding reply to an Office requirement, since 37 CFR 1.137(c) permits the filing of a continuing application in lieu of the required reply only in a nonprovisional application.
35 U.S.C. 111(b)(5) provides that a provisional application shall be regarded as abandoned 12 months after its filing date and shall not be subject to revival after such 12-month period. 37 CFR 1.137(g) provides that a provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to 37 CFR 1.137, however a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances. Note that the pendency of a provisional application is extended to the next succeeding secular or business day if the day that is twelve months after the filing date of the provisional application falls on a Saturday, Sunday, or federal holiday within the District of Columbia. See 35 U.S.C. 119(e)(3).
A provisional application may be abandoned prior to 12 months from its filing date for failure to reply to an Office requirement (e.g., failure to submit the filing fee and/or cover sheet). Applicant may petition to have an abandoned provisional application revived as a pending provisional application for a period of no longer than 12 months from the filing date of the provisional application where the delay was unintentional. It would be permissible to file a petition for revival later than 12 months from the filing date of the provisional application but only to revive the application for the 12-month period following the filing of the provisional application. Thus, even if the petition were granted to establish the pendency up to the end of the 12-month period, the provisional application would not be considered pending after 12 months from its filing date.
711.03(d) Examiner’s Statement on Petition To Set Aside Examiner’s Holding [R-08.2012]
37 CFR 1.181 states that the examiner "may be directed by the Director to furnish a written statement, within a specific time, setting forth the reasons for his or her decision upon the matters averred in the petition, supplying a copy to the petitioner." Unless requested, however, such a statement should not be prepared. See MPEP § 1002.01.
711.04 Public Access to Abandoned Applications [R-08.2012]
Access will be provided to the application file itself for any non-Image File Wrapper (IFW) abandoned published application. When access to the IFW system is available in the File Information Unit (FIU) and/or Internet access to abandoned published IFW applications, such files will be provided to the public via the FIU and/or Internet. Since there is no paper file wrapper for IFW applications, if electronic access is not available to the public, then access to IFW files is only available by ordering a copy of the application-as-filed, the file contents of the published application or a specific document in the file of the published application from the Office of Public Records and payment of the appropriate fee set forth in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(ii).
Access to an abandoned unpublished application may be provided to any person if a written request for access is submitted, and the abandoned application is identified or relied upon:
- (A) in a U.S. patent application publication or patent;
- (B) in statutory invention registration; or
- (C) in an international application that is published in accordance with PCT Article 21(2).
An application is considered identified in a document such as a patent when the application number or serial number and filing date, first named inventor, title and filing date or other application specific information are provided in the text of the patent, but not when the identification is made in a paper in the file contents of the patent and is not included in the printed patent. See 37 CFR 1.14(a)(1)(iv). A copy of the application-as-filed, the file contents of the abandoned application, or a specific document in the file of the abandoned application may also be provided to any person upon written request, and payment of the fee set forth in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(iv). See also MPEP § 103. Form PTO/SB/68 may be used to request access of an abandoned application under 37 CFR 1.14(a)(1)(iv).
711.04(a) Date of Abandonment [R-11.2013]
Applications are not ordinarily reviewed for possible abandonment until the maximum permissible period for which an extension of time under 37 CFR 1.136(a) plus 1 month has expired.
The applications should be carefully scrutinized by the appropriate examiner to verify that they are actually abandoned. A check should be made of files containing a decision of the Patent Trial and Appeal Board for the presence of allowed claims to avoid erroneously treating the proceedings as terminated (see MPEP § 1214.06, subsections II-IV for proper treatment of any claims that stand allowed).
If the application is abandoned, the date of the abandonment is after midnight of the date on which the set shortened statutory period, including any extensions under 37 CFR 1.136, expired. This is normally the end of the 3-month shortened statutory period.
711.04(b) Ordering of Patented and Abandoned Files [R-11.2013]
In examination of an application it is sometimes necessary to inspect the application papers of a previously patented or abandoned application. It is always necessary to do so in the examination of a reissue application.
Recently patented and abandoned paper files are stored at the Files Repository. Older files are housed in warehouses located off site. Image File Wrapper (IFW) applications are stored electronically and do not have a paper file wrapper to be stored other than certain artifact material. The electronic file is the official record of the application.
Patented and abandoned paper files or artifact folders are ordered by means of a PALM transaction. To place such an order, the examiner is required to input his/her PALM location code, employee number, and patent number(s) and/or application number(s) of the file(s) that are needed. After transmission of the requested transaction by the examiner, a "response" screen informs him/her of the status of the request for each file. The examiner is informed that the request is:
- (A) accepted;
- (B) accepted, but for which the file is stored at a warehouse off site (in which case delivery time is increased);
- (C) not accepted because the file is not located at the repository or warehouse;
- (D) not accepted because a previous request for the file has not yet been filled; or
- (E) not accepted because the patent or application number inputted is not valid.
Personnel at the Files Repository regularly perform a PALM print transaction which produces a list of all accepted requests in patent number order and, for requests for abandoned files, in application number order. The printed record of each request is detached from the list when its associated file is found and then stapled to it. Periodic deliveries of files are made to the offices of their requestors by Files Repository personnel, and files that are ready to be returned to the repository are picked up. For applications stored in IFW, this process is not necessary.
With the exception of certain older files, the drawings of patented and abandoned files, if any, are now stored within their respective application file wrappers. Since it is desired not to separate one from the other, both the file and its drawings are delivered when a file is ordered.
711.04(c) Notifying Applicants of Abandonment [R-07.2015]
The Patent Examining Corps currently mails to the correspondence address of record, a Notice of Abandonment form PTOL-1432 in all applications which become abandoned for failure to prosecute. However, in no case will mere failure to receive a notice of abandonment affect the status of an abandoned application.
This procedure should enable applicants to take appropriate and diligent action to reinstate an application inadvertently abandoned for failure to timely reply to an official communication. In most cases, a petition to revive under 37 CFR 1.137 will be the appropriate remedy. It may be that a reply to the Office action was mailed to the Office with a certificate of mailing declaration as a part thereof (MPEP § 512) but was not received in the Office. In this instance, adequate relief may be available by means of a petition to withdraw the holding of abandonment. See MPEP § 711.03(c).
In any instance, if action is not taken promptly after receiving the notice of abandonment, appropriate relief may not be granted. If a lack of diligent action is predicated on the contention that neither the Office action nor the notice of abandonment was received, one may presume that there is a problem with the correspondence address of record. Accordingly, attention is directed to MPEP §§ 403 and MPEP § 601.03(a) and (b) dealing with changes of address. In essence, it is imperative that a paper notifying the Office of a change of address be filed promptly in each application in which the correspondence address is to be changed (except as provided for under Customer Number practice — see MPEP § 403).
711.05 Letter of Abandonment Received After Application Is Allowed [R-08.2012]
Receipt of a letter of abandonment while an application is allowed is acknowledged by the Publishing Division.
An express abandonment arriving after the issue fee has been paid will not be accepted without a showing of one of the reasons indicated in 37 CFR 1.313(c), or else a showing under 37 CFR 1.183 justifying suspension of 37 CFR 1.313. See also MPEP § 711.01.
711.06 Abstracts, Abbreviatures, and Defensive Publications [R-10.2019]
I. ABSTRACTS
Abstracts were prepared and published in accordance with the Notice of January 25, 1949, 619 OG 258. Each abstract includes a summary of the disclosure of the abandoned application, and in applications having drawings, a figure of the drawing. The publication of such abstracts was discontinued in 1953.
II. ABBREVIATURES
Abbreviatures were prepared and published in accordance with the procedure indicated in the Notice of October 13, 1964, 808 OG 1. Each abbreviature contains a specific portion of the disclosure of the abandoned application, preferably a detailed representative claim, and, in applications having drawings, a figure of the drawing. The publication of such abbreviatures was discontinued in 1965.
III. DEFENSIVE PUBLICATIONS
The Defensive Publication Program, which provided for the publication of the abstract of the technical disclosure of a pending application if the applicant waived his or her rights to an enforceable patent, was available between April 1968 and May 8, 1985. The program was ended in view of the applicant’s ability to obtain a Statutory Invention Registration.
An application was laid open for public inspection under the Defensive Publication Program and the applicant provisionally abandoned the application, retaining rights to an interference for a limited period of 5 years from the earliest effective U.S. filing date.
The Defensive Publication Abstract and a selected figure of the drawing, if any, were published in the Official Gazette. Defensive Publication Search Copies, containing the defensive publication abstract and suitable drawings, if any, were provided for the application file, the Patent Search Room and the examiner’s search files. A defensive publication is not a patent or an application publication under 35 U.S.C. 122(b); it is a publication. Therefore, it is prior art only as of its publication date.
The defensive publication application files are accessible by request to the File Information Unit (Record Room).
Defensive Publication Number
Distinct numbers are assigned to all Defensive Publications published December 16, 1969 through October 1980, for example.
For Defensive Publications published on and after November 4, 1980, a different numbering system is used.
The revised numbering system is as follows:
Defensive Publications are included in subclass lists and subscription orders. The distinct numbers are used for all official reference and document copy requirements.
A conversion table from the application serial number to the distinct number for all Defensive Publications published before December 16, 1969 appears at 869 OG 687.
711.06(a) Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References [R-10.2019]
It is important that abstracts, abbreviatures, and defensive publications (OG Defensive Publication and Defensive Publication Search Copy) be referred to as publications.
These printed publications are cited as prior art under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) or 102(b) effective from the date of publication in the Official Gazette. See Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973) and Ex Parte Osmond, 191 USPQ 340 (Bd. App. 1976).
An application or portion thereof from which an abstract, abbreviature or defensive publication has been prepared may be used as a reference under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a), effective from the actual date of filing in the United States, only for evidence of prior knowledge of another.
These publications may be used alone or in combination with other prior art in rejecting claims under 35 U.S.C. 102(a)(1) or 103 or pre-AIA 35 U.S.C. 102 and 103.
Defensive Publications are listed with "U.S. Patent Documents." Abstracts and Abbreviatures are listed under "Other References" in the citation thereof as follows:
- (A) Abstracts and Abbreviatures
- Brown, (abstract or abbreviature) of Serial No. ........, filed ............., published in OG ........., on ........, (list classification).
- (B) Applications or designated portions thereof, abstracts, abbreviatures, and defensive publications
- Jones, Application Serial No. ........, filed ............., laid open to public inspection on ............... as noted at .......... OG (portion of application relied on), (list classification, if any).
712 [Reserved]
713 Interviews [R-07.2015]
Discussions between an applicant and an examiner are often indispensable to advance the prosecution of a patent application. Generally, interviews that improve the mutual understanding of specific issues in an application should be promoted. Properly conducted, an interview can bridge the gap between an examiner and an applicant with regard to the substantive matters at issue in an application. Interviews often help to advance prosecution and identify patentable subject matter. The applicant and the examiner should consider the advantages of conducting an interview to advance the prosecution of a particular patent application. Positions presented during an interview should be advanced with decorum and courtesy.
An interview should be granted when the nature of the case is such that the interview serves to develop or clarify outstanding issues in an application. Both applicants and examiners should understand that interview time is limited for both, and therefore they should use the interview time efficiently. Both parties should ensure the interview does not extend beyond a reasonable time and minimize interruptions during the interview. Applicants and examiners should facilitate the grouping of interviews where effective.
All discussions between the applicant/practitioner and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. This includes any and all records or communications received in connection with the interview, whether the interview was conducted in-person or through a telephone conversation, video conference, electronic mail, or electronic message system. This policy and other interview tips are detailed in the Interview Best Practices document which is available at www.uspto.gov/patents/law/exam/interview_ best_ practices.pdf. Where an electronic record is created as part of the interview, e.g., a series of electronic messages, a copy of the electronic record is to be made of record in the application. Where an electronic record is not created a summary of the interview must be made of record.
713.01 General Policy, How Conducted [R-08.2017]
37 C.F.R. 1.133 Interviews.
- (a)
- (1) Interviews with examiners concerning applications and other matters pending before the Office must be conducted on Office premises and within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Director.
- (2) An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the examiner determines that such an interview would advance prosecution of the application.
- (3) The examiner may require that an interview be scheduled in advance.
- (b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in §§ 1.111 and 1.135.
I. WHERE AND WHEN TO CONDUCT INTERVIEWS
- i) Face-to-face interviews may be accomplished via video conferencing or in-person. The physical location of either party participating in an interview should not limit the USPTO’s ability to hold face-to-face interviews. A request for a face-to-face interview will normally be granted. Other times, a telephone interview provides an appropriate level of interaction.
- ii) In-person interviews with the examiner should normally be granted. In-person interviews must be conducted on the Office premises, such as in an examiner’s office, a conference room, an interview room or a video conference center, and should be held during normal business hours of 8:30 a.m. – 5:00 p.m. Monday through Friday.
- iii) Interviews other than in-person interviews should be held during normal business hours and may also be held during mutually agreed upon non-traditional business hours, such as Saturday and evening hours.
- iv) When an examiner is working remotely from a USPTO campus, there may not be an opportunity to have an in-person interview. The examiner shall accommodate an applicant, attorney, or agent’s preference for an interview via telephone conversation, video conference, electronic mail, or electronic instant message system using USPTO-based collaboration tools, consistent with the special requirements of section II. below. Alternatively, an applicant, attorney, or agent may request to have an interview on a USPTO campus while the examiner is remotely participating via the phone or video conference. In this instance, appropriate arrangements will be made on the USPTO campus for equipment and/or internet access to facilitate the interview. Appropriate USPTO representative may be present with the applicant during the on campus interview.
- v) Any Examiner may, with the applicant’s consent, conduct an interview by using video conferencing and collaboration tools provided by the Office.
- vi) Examiners who normally work remotely should arrange to hold an interview on campus if the timing can be mutually agreed upon with the applicant. In special situations the examiner will be required to travel to campus for an in-person interview. The decision on special situations will be made at the TC Director level or higher as to whether the examiner of record or another USPTO representative will be on campus for the interview. A hoteling examiner within the local commuting area of a satellite office may use that satellite office for in-person or video conference interviews.
- vii) Examiners working on campus may hold interviews in-person, telephonically, or via video conference. Examiners may receive requests from an applicant for an interview using video conferencing. Such requests should normally be granted. See MPEP § 713.01, subsection III below. Telework does not prevent examiners from conducting interviews via video conference or telephonically from their approved alternate worksite.
II. SPECIAL REQUIREMENTS FOR USING INTERNET COMMUNICATIONS
Internet email, instant message system, or video conferencing shall NOT be used to conduct an exchange or communications similar to those exchanged during telephone or personal interviews unless authorization from the applicants or an attorney/agent of record has been given to use Internet communications. See MPEP § 502.03.
A. Written Authorization
The following is a sample written authorization which may be used by applicant:
"Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file."
B. Oral Authorization
The best practice is to have a written authorization of record in the file. However, an oral authorization from the applicant/practitioner is sufficient for video conferencing interviews. The oral authorization is limited to the arrangement of video conference interview (including the meeting invitation) and does not extend to other communications regarding the application. The examiner should note on the record the details of the oral authorization in the interview summary or in a separate communication.
III. VIDEO CONFERENCING
- i) A video conference is a meeting, usually via the Internet, using USPTO-supplied collaboration tools to visually interact and collaborate with people anywhere in real time.
- ii) All video conferences for interviews MUST originate or be hosted by USPTO personnel. Examiners may not conduct interviews via video conferences hosted by applicants or third parties. The examiner assigned to the subject application should coordinate the video conference using USPTO-supplied collaboration tools.
- iii) When an applicant requests a video conference with an examiner, the request should normally be granted. When applicants request an in-person interview but there is not an opportunity for both parties to be on the same USPTO campus at a mutually agreed upon time, a video conference should be offered. All examiners, regardless of worksite location, should offer and hold interviews via video conferencing when appropriate.
- iv) Video conferencing should be conducted consistent with the special procedure of subsection II above. Authorization from the applicant, preferably written, should be obtained prior to scheduling and setting up a video conference. See MPEP § 502.03.
IV. SCHEDULING AND CONDUCTING AN INTERVIEW
An interview, whether by video conference, over the telephone, or in person, should be arranged for in advance to insure that the primary examiner and/or the examiner in charge of the application will be available. Use of the USPTO’s Automated Interview Request (AIR) at www.uspto.gov/interviewpractice is encouraged, but in the alternative, the examiner may be contacted by letter, facsimile, electronic mail, or telephone to schedule the interview. An "Applicant Initiated Interview Request" form (PTOL-413A) may be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, instant message system or video conference, and should include a brief description of the issues to be discussed. A copy of the completed "Applicant Initiated Interview Request" form should be attached to the Interview Summary form at the completion of the interview and a copy should be given to applicant or applicant’s representative.
When a second art unit is involved, such as in the case where approval of a Patentability Report is necessary, the availability of the second examiner should also be checked. See MPEP §§ 705 - 705.01(f). An appointment for interview once arranged should be kept by examiner and applicant, attorney, or agent. When, after an appointment has been made, circumstances compel the absence of a party necessary to an effective interview (e.g., applicant, applicant’s representative, or examiner), the other party should be notified immediately so that substitute arrangements may be made.
When a telephone call is made to an examiner and it becomes evident that a lengthy discussion will ensue or that the examiner needs time to restudy the situation, the call should be terminated with an agreement that the examiner will call back at a specified time. Such a call and all other calls originated by the examiner should be made through the Office’s telephone system.
An examiner’s suggestion of allowable subject matter may justify indicating the possibility of an interview to accelerate early agreement on allowable claims.
The unexpected appearance of an attorney or applicant requesting an interview without any previous notice may well justify the examiner’s refusal of the interview at that time, particularly in an involved case.
An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.
Thus, the attorney when presenting himself or herself for an interview should be fully prepared to discuss the issues raised in the Office action. When it is obvious that the attorney is not so prepared, the interview should be rescheduled. It is desirable that the attorney or applicant indicate in advance what issues he or she desires to discuss at the interview by submitting, in writing, a proposed amendment. This would permit the examiner to prepare in advance for the interview and to focus on the matters set forth in the proposed amendment.
In order to have an effective interview, both parties should avoid unnecessary interruptions. Do not take incoming telephone calls, emails, or text messages unless an emergency. All parties participating in an interview should familiarize themselves with the status and existing issues in an application or reexamination proceeding before an interview.
The examiner should not hesitate to state, when appropriate, that claims presented for discussion at an interview would require further search and consideration. Nor should the examiner hesitate to conclude an interview when it appears that no common ground can be reached or when it becomes apparent that the application requires further amendment or an additional action by the examiner. However, the examiner should attempt to identify issues and resolve differences during the interview as much as possible.
It is the responsibility of all participants to see that the interview is not extended beyond a reasonable period, usually 30 minutes. It is the duty of the primary examiner to see that an interview is not extended beyond a reasonable period.
During an interview with a pro se applicant (i.e., an applicant who is prosecuting his or her own case and is not familiar with Office procedure), the examiner may make suggestions that will advance the prosecution of this case; this lies wholly within the examiner’s discretion. Excessive time, however, should not be allowed for such interviews.
Examiners should inspect all incoming papers. See MPEP § 714.05. Where a complete reply to a first action includes a request for an interview, a telephone consultation to be initiated by the examiner or a video conference, or where an out-of-town attorney under similar circumstances requests that the examiner defer taking any further action on the case until the attorney’s next visit to a USPTO campus (provided such visit is not beyond the date when the Office action would normally be taken up for action), the examiner, as soon as he or she has considered the effect of the reply, should grant such request if it appears that the interview or consultation would result in expediting the case to a final action.
Where agreement is reached as a result of an interview, applicant’s representative should be advised that an amendment pursuant to the agreement should be promptly submitted. If the amendment prepares the case for final action, the examiner should take the case up as special. If not, the case should await its turn.
A duplicate copy of a filed amendment and/or remarks may be sent to the examiner in order to facilitate early consideration.
A duplicate copy is unnecessary when the amendment and/or remarks are filed via the Office’s electronic filing system (EFS-Web) as the examiner will be able to quickly access such documents. See the EFS-Web Guidance and Resources page of the Office website (www.uspto.gov/patents /process/file/efs/guidance/index. jsp ) for additional information. See also MPEP § 502.05.
The substance of any interview, whether in person, by video conference, by electronic mail, electronic message system or by telephone must be made of record in the application. See MPEP §§ 502.03 and 713.04. A paper copy of the Internet email contents or instant message system transcripts or video conferencing transcripts, if any, MUST be made and placed in the patent application file as required by the Federal Records Act in the same manner as an Examiner Interview Summary Form is entered.
Examiners may grant one interview after final rejection. See MPEP § 713.09.
V. VIEWING OF VIDEO DURING INTERVIEWS
The USPTO has compact disc player equipment available for viewing video discs from applicants during interviews with patent examiners.
Attorneys or applicants wishing to show a video during an examiner interview must be able to demonstrate that the content of the video has a bearing on an outstanding issue in the application and its viewing will advance the prosecution of the application. If the video that applicant would like to display during the interview is in a format other than current DVD format, the applicant should also bring to the interview the equipment necessary to display the video. The substance of the interview, including a summary of the content of the video must be made of record in the application. See MPEP § 713.04.
VI. EXAMINATION BY EXAMINER OTHER THAN THE ONE WHO CONDUCTED THE INTERVIEW
Sometimes the examiner who conducted the interview is transferred to another Technology Center or resigns, and the examination is continued by another examiner. If there is an indication that an interview had been held, the second examiner should ascertain if any agreements were reached at the interview. Where conditions permit, as in the absence of a clear error or knowledge of other prior art, the second examiner should take a position consistent with the agreements previously reached. See MPEP § 812.01 for a statement of telephone practice in restriction and election of species situations.
VII. COLLABORATION TOOLS
Collaboration tools include instant messaging, document sharing and whiteboard, virtual meeting tools, and video conferencing equipment and software. All collaboration tools used for interviews must be supplied by the USPTO and hosted by the USPTO network.
713.02 Interviews Prior to First Official Action [R-07.2015]
A request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications. In all other applications, an interview before the first Office action is encouraged where the examiner determines that such an interview would advance prosecution of the application. Thus, the examiner may require that an applicant requesting an interview before the first Office action provide a paper that includes a general statement of the state of the art at the time of the invention, and an identification of no more than three (3) references believed to be the "closest" prior art and an explanation as to how the broadest claim distinguishes over such references. See 37 CFR 1.133(a). Applicants seeking prioritized examination should be prepared to participate in an interview with the examiner. See MPEP § 708.02(b). Similarly the Office announced a pilot program in which an interview is conducted before a first action on the merits. Information on this pilot program is available from: www.uspto.gov/patents/init_events/faipp_full.jsp.
I. SEARCHING IN GROUP
Seeking search help in the Technology Center art unit should be permitted only with the consent of a primary examiner.
II. EXPOUNDING PATENT LAW
The U.S. Patent and Trademark Office cannot act as an expounder of the patent law, nor as a counselor for individuals.
713.03 Interview for "Sounding Out" Examiner Not Permitted [R-08.2012]
Interviews that are solely for the purpose of "sounding out" the examiner, as by a local attorney acting for an out-of-town attorney, should not be permitted when it is apparent that any agreement that would be reached is conditional upon being satisfactory to the principal attorney.
713.04 Substance of Interview Must Be Made of Record [R-10.2019]
A complete written statement as to the substance of any in-person, video conference, electronic mail, telephone interview, or electronic message system discussion with regard to the merits of an application must be made of record in the application, whether or not an agreement with the examiner was reached at the interview. The requirement may be satisfied by submitting a transcript generated during an electronic mail or message exchange. See 37 CFR 1.133(b) and MPEP §§ 502.03 and 713.01.
37 C.F.R. 1.133 Interviews.
*****
- (b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in §§ 1.111 and 1.135.
37 C.F.R. 1.2 Business to be transacted in writing.
All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
The action of the U.S. Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself incomplete through the failure to record the substance of interviews. Accordingly, examiners must complete an Interview Summary form for each interview where a matter of substance has been discussed during the interview. For an applicant-initiated interview, it is the responsibility of the applicant to make the substance of the interview of record in the application file and it is the examiner’s responsibility to see that such a record is made and to correct material inaccuracies which bear directly on the question of patentability. Form PTOL-413, reproduced below, may be used to record the substance of an applicant-initiated interview.
For an examiner-initiated interview, it is the responsibility of the examiner to make the substance of the interview of record either on an Interview Summary form or, when the interview results in allowance of the application, by incorporating a complete record of the interview in an examiner’s amendment. Form PTOL-413B, reproduced below, may be used to record the substance of an Examiner-initiated interview.
See subsection I below for a list of the items to be included for complete and proper recordation of an interview. Discussions regarding only procedural matters, directed solely to restriction requirements for which interview recordation is otherwise provided for in MPEP § 812.01, or pointing out typographical errors in Office actions or the like, are excluded from the interview recordation procedures.
For both applicant-initiated and examiner-initiated interviews, it is recommended the examiner begin completing an Interview Summary form in advance of the interview by identifying the rejections, claims and prior art documents to be discussed. The examiner should complete the "Substance of the Interview" portion of the Interview Summary form at the conclusion of the interview. If applicant initiated the interview using the "Applicant Initiated Interview Request," a copy of completed form PTOL-413A should be included as an attachment to the Interview Summary form. Upon completion of the interview, a copy of the Interview Summary form should be given to the applicant (or applicant’s patent practitioner) along with any attachments.
The Interview Summary form shall include the date the interview was held and the substance of the interview shall be properly recorded. In a personal interview, a duplicate copy of the Interview Summary form along with any attachment(s) is given to the applicant (or applicant’s patent practitioner) at the conclusion of the interview. In the case of a telephonic, electronic mail, electronic message system or video conference interview, the copy is mailed to the applicant’s correspondence address either with or prior to the next official communication. A copy of the form may be faxed or, if the Office has appropriate authorization to conduct communications via the Internet, a copy of the form may be e-mailed to applicant (or applicant’s attorney or agent) at the conclusion of the interview. If additional correspondence from the examiner is not likely before an allowance or if other circumstances dictate, the Interview Summary form should be mailed promptly after the telephonic, electronic mail, electronic message system or video conference interview rather than with the next official communication.
The Interview Summary form provides for recordation of the following information:
- (A) application number;
- (B) name of applicant;
- (C) name of examiner;
- (D) date of interview;
- (E) type of interview (personal, telephonic, or WebEx/video conference);
- (F) name of participant(s) (applicant, applicant’s representative, etc.);
- (G) an indication whether or not an exhibit was shown or a demonstration conducted;
- (H) an identification of the claims discussed;
- (I) an identification of the specific prior art discussed;
- (J) an indication whether an agreement was reached and if so, a description of the general nature of the agreement (may be by attachment of a copy of amendments or claims agreed as being allowable). (Agreements as to allowability are tentative and do not restrict further action by the examiner to the contrary.);
- (K) the signature of the examiner who conducted the interview;
- (L) names of other personnel participating in the interview.
In the case of an applicant-initiated interview, the Interview Summary form will include a reminder indicating it is the applicant’s responsibility to record the substance of the interview. It is desirable that the examiner also orally remind the applicant of the applicant’s obligation to record the substance of the interview in each case where the interview was not initiated by the examiner. Where an interview initiated by the applicant results in the allowance of the application, the applicant is advised to file a written record of the substance of the interview as soon as possible making of record the items listed below to prevent any possible delays in the issuance of a patent.
I. ITEMS REQUIRED IN A COMPLETE AND PROPER SUMMARY
The complete and proper recordation of the substance of any interview should include or be supplemented to include at least the following applicable items:
- (A) a brief description of the nature of any exhibit shown or any demonstration conducted;
- (B) identification of the claims discussed;
- (C) identification of specific prior art discussed;
- (D) identification of the principal proposed amendments of a substantive nature discussed (may refer to a copy attached to the Interview Summary form completed by the examiner);
- (E) the general thrust of the principal arguments of the applicant and the examiner should also be identified, even where the interview is initiated by the examiner. The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully describe those arguments which he or she feels were or might be persuasive to the examiner;
- (F) a general indication of any other pertinent matters discussed;
- (G) if appropriate, the general results or outcome of the interview; and
- (H) in the case of an interview via electronic mail a paper copy of the contents exchanged over the internet MUST be made and placed in the patent application file as required by the Federal Records Act in the same manner as an Examiner Interview Summary form is entered.
II. EXAMINER TO CHECK FOR ACCURACY
Examiners are expected to carefully review the applicant’s record of the substance of an interview. If the record is not complete or accurate, the examiner may give the applicant a 2-month time period to complete the reply under 37 CFR 1.135(c) where the record of the substance of the interview is in a reply to a non-final Office action.
¶ 7.84 Amendment Is Non-Responsive to Interview
The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
Examiner Note:
1. In bracket 2, insert the date of the interview.
2. In bracket 3, explain the deficiencies.
Applicant’s summary of what took place at the interview should be carefully checked to ensure the accuracy of any argument or statement attributed to the examiner during the interview. If there is an inaccuracy and it bears directly on the question of patentability, it should be pointed out in the next Office communication from the examiner (e.g., rejection, interview summary, or notice of allowability), wherein the examiner should set forth an accurate version of the examiner's argument or statement.
If the record is complete and accurate, the examiner should electronically annotate the record with the indication "Interview record OK" on the paper recording the substance of the interview.
713.05 Interviews Prohibited or Granted, Special Situations [R-08.2017]
Except in unusual situations, interviews with examiners are not permitted after the submission of an appeal brief or after a notice of allowability for the application has been mailed.
An interview may be appropriate before applicant’s first reply when the examiner has suggested that allowable subject matter is present or where it will assist applicant in judging the propriety of continuing the prosecution.
Office employees are forbidden to hold either oral or written communication with an unregistered or a suspended or excluded attorney or agent regarding an application unless it is one in which said attorney or agent is the applicant. See MPEP § 105.
Interviews (MPEP § 713) are frequently requested by persons whose credentials are of such informal character that there is serious question as to whether such persons are entitled to any information under the provisions of 37 CFR 1.14. In general, interviews are not granted to persons who lack proper authority from the applicant or attorney or agent of record in the form of a paper on file in the application. A MERE POWER TO INSPECT IS NOT SUFFICIENT AUTHORITY FOR GRANTING AN INTERVIEW INVOLVING THE MERITS OF THE APPLICATION.
Interviews are generally not granted to registered individuals to whom there is no power of attorney or authorization to act in a representative capacity. See MPEP § 405 for additional information and for form PTO/SB/84, Authorization to Act in a Representative Capacity. Note that pursuant to 37 CFR 11.106, a practitioner cannot authorize other registered practitioners to conduct interviews unless the client gives informed consent. Furthermore, even with informed consent, a practitioner should not authorize a nonpractitioner to conduct interviews as this could be considered aiding in the unauthorized practice of law. See 37 CFR 11.505.
While a registered practitioner not of record may request an interview (if the practitioner is authorized to do so by the applicant or the attorney of record), it is recommended that a power of attorney or authorization to act in a representative capacity be filed, preferably via EFS-Web, prior to the interview. Registered practitioners, when acting in a representative capacity, can alternatively show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form (PTOL-413A). This eliminates the need to file a power of attorney or authorization to act in a representative capacity before having an interview. However, an interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use of the of the interview request form will be conducted based on the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a).
Interviews normally should not be granted unless the requesting party has authority to bind the principal concerned. The use of the provisions of 37 CFR 1.34 by a third party or its representative to conduct an interview, or take other action not specifically permitted by the rules of practice in an application for patent, will be considered a violation of 37 CFR 11.18 and may result in disciplinary action if done by a practitioner. See MPEP § 410 for a discussion of violations of 37 CFR 11.18.
For an interview with an examiner who does not have negotiation authority, arrangements should always include an examiner who does have such authority, and who is familiar with the application, so that authoritative agreement may be reached at the time of the interview.
GROUPED INTERVIEWS
For attorneys remote from the Washington, D.C. area who prefer in-person or video conference interviews, the grouped interview practice is effective. If in any case there is a prearranged interview, with agreement to file a prompt supplemental amendment putting the case as nearly as may be in condition for concluding action, prompt filing of the supplemental amendment gives the application special status, and brings it up for immediate special action.
713.06 No Inter Partes Questions Discussed Ex Parte [R-08.2012]
The examiner may not discuss inter partes questions ex parte with any of the interested parties.
713.07 Exposure of Other Cases [R-11.2013]
Prior to an interview in the examiner’s office space or via video conference, the examiner should arrange his or her desk so that all files, drawings and other papers, except those necessary in the interview, are placed out of view. See MPEP § 101.
713.08 Demonstration, Exhibits, Models [R-07.2015]
The invention in question may be exhibited or demonstrated during the interview by a model or exhibit thereof. A model or exhibit will not generally be admitted as part of the record of an application. See 37 CFR 1.91. However, a model or exhibit submitted by the applicant which complies with 37 CFR 1.91 would be made part of the application record. See MPEP §§ 608.03 and 608.03(a).
If the model or exhibit is merely used for demonstration purpose during the course of the interview, it will not be made part of the record (does not comply with 37 CFR 1.91 ). A full description as to what was demonstrated/exhibited must be made of record in the application. See 37 CFR 1.133(b). Demonstrations of apparatus or exhibits too large to be brought into the Office may be viewed by the examiner outside of the Office (in the Washington, D.C. area) with the approval of the supervisory patent examiner. It is presumed that the witnessing of the demonstration or the reviewing of the exhibit is actually essential in the developing and clarifying of the issues involved in the application.
713.09 Interviews Between Final Rejection and Notice of Appeal [R-08.2017]
Normally, one interview after final rejection is permitted in order to place the application in condition for allowance or to resolve issues prior to appeal. However, prior to the interview, the intended purpose and content of the interview should be presented briefly, preferably in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. See MPEP § 714.13.
Interviews may be held after the expiration of the shortened statutory period and prior to the maximum permitted statutory period of 6 months without an extension of time. See MPEP § 706.07(f).
A second or further interview after a final rejection may be held if the examiner is convinced that it will expedite the issues for appeal or disposal of the application.
For interviews after notice of appeal, see MPEP § 1204.03.
713.10 Interview Preceding Filing Amendment Under 37 CFR 1.312 [R-08.2012]
After an application is sent to issue, it is technically no longer under the jurisdiction of the primary examiner. 37 CFR 1.312. An interview with an examiner that would involve a detailed consideration of claims sought to be entered and perhaps entailing a discussion of the prior art for determining whether or not the claims are allowable should not be given. Obviously an applicant is not entitled to a greater degree of consideration in an amendment presented informally than is given an applicant in the consideration of an amendment when formally presented, particularly since consideration of an amendment filed under 37 CFR 1.312 cannot be demanded as a matter of right.
Requests for interviews on cases where a notice of allowance has been mailed should be granted only with specific approval of the Technology Center Director upon a showing in writing of extraordinary circumstances.
714 Amendments, Applicant’s Action [R-10.2019]
37 C.F.R. 1.121 Manner of making amendments in application.
- (a) Amendments in applications, other than reissue applications. Amendments in applications, other than reissue applications, are made by filing a paper, in compliance with § 1.52, directing that specified amendments be made.
- (b) Specification. Amendments to the specification, other than the claims, computer listings (§ 1.96 ) and sequence listings (§ 1.825 ), must be made by adding, deleting or replacing a paragraph, by replacing a section, or by a substitute specification, in the manner specified in this section.
- (1) Amendment to delete, replace, or add a paragraph. Amendments to the specification, including amendment to a section heading or the title of the invention which are considered for amendment purposes to be an amendment of a paragraph, must be made by submitting:
- (i) An instruction, which unambiguously identifies the location, to delete one or more paragraphs of the specification, replace a paragraph with one or more replacement paragraphs, or add one or more paragraphs;
- (ii) The full text of any replacement paragraph with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived;
- (iii) The full text of any added paragraphs without any underlining; and
- (iv) The text of a paragraph to be deleted must not be presented with strike-through or placed within double brackets. The instruction to delete may identify a paragraph by its paragraph number or include a few words from the beginning, and end, of the paragraph, if needed for paragraph identification purposes.
- (2) Amendment by replacement section. If the sections of the specification contain section headings as provided in § 1.77(b), § 1.154(b), or § 1.163(c), amendments to the specification, other than the claims, may be made by submitting:
- (i) A reference to the section heading along with an instruction, which unambiguously identifies the location, to delete that section of the specification and to replace such deleted section with a replacement section; and
- (ii) A replacement section with markings to show all changes relative to the previous version of the section. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived.
- (3) Amendment by substitute specification. The specification, other than the claims, may also be amended by submitting:
- (i) An instruction to replace the specification; and
- (ii) A substitute specification in compliance with §§ 1.125(b) and (c).
- (4) Reinstatement of previously deleted paragraph or section. A previously deleted paragraph or section may be reinstated only by a subsequent amendment adding the previously deleted paragraph or section.
- (5) Presentation in subsequent amendment document. Once a paragraph or section is amended in a first amendment document, the paragraph or section shall not be represented in a subsequent amendment document unless it is amended again or a substitute specification is provided.
- (1) Amendment to delete, replace, or add a paragraph. Amendments to the specification, including amendment to a section heading or the title of the invention which are considered for amendment purposes to be an amendment of a paragraph, must be made by submitting:
- (c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
- (1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of "canceled" or "not entered" may be aggregated into one statement (e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
- (2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of "currently amended," and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of "currently amended," or "withdrawn" if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as "withdrawn— currently amended."
- (3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of "original," "withdrawn" or "previously presented" will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of "withdrawn" or "previously presented." Any claim added by amendment must be indicated with the status of "new" and presented in clean version, i.e., without any underlining.
- (4) When claim text shall not be presented; canceling a claim.
- (i) No claim text shall be presented for any claim in the claim listing with the status of "canceled" or "not entered."
- (ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as "canceled" will constitute an instruction to cancel the claim.
- (5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a "new" claim with a new claim number.
- (d) Drawings : One or more application drawings shall be amended in the following manner: Any changes to an application drawing must be in compliance with § 1.84, or, for a nonprovisional international design application, in compliance with §§ 1.84(c) and 1.1026, and must be submitted on a replacement sheet of drawings which shall be an attachment to the amendment document and, in the top margin, labeled "Replacement Sheet". Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. Any new sheet of drawings containing an additional figure must be labeled in the top margin as "New Sheet." All changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper.
- (1) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Sheet" and must be presented in the amendment or remarks section that explains the change to the drawings.
- (2) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
- (e) Disclosure consistency. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
- (f) No new matter. No amendment may introduce new matter into the disclosure of an application.
- (g) Exception for examiner’s amendments. Changes to the specification, including the claims, of an application made by the Office in an examiner’s amendment may be made by specific instructions to insert or delete subject matter set forth in the examiner’s amendment by identifying the precise point in the specification or the claim(s) where the insertion or deletion is to be made. Compliance with paragraphs (b)(1), (b)(2), or (c) of this section is not required.
- (h) Amendment sections. Each section of an amendment document (e.g., amendment to the claims, amendment to the specification, replacement drawings, and remarks) must begin on a separate sheet.
- (i) Amendments in reissue applications. Any amendment to the description and claims in reissue applications must be made in accordance with § 1.173.
- (j) Amendments in reexamination proceedings. Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with § 1.530.
- (k) Amendments in provisional applications. Amendments in provisional applications are not usually made. If an amendment is made to a provisional application, however, it must comply with the provisions of this section. Any amendments to a provisional application shall be placed in the provisional application file but may not be entered.
I. WHEN APPLICANT MAY AMEND
The applicant may amend:
- (A) ) before or after the first Office action and also after the second Office actions as specified in 37 CFR 1.112;
- (B) after final rejection, if the amendment meets the criteria of 37 CFR 1.116;
- (C) after the date of filing a notice of appeal pursuant to 37 CFR 41.31(a), if the amendment meets the criteria of 37 CFR 41.33; and
- (D) when and as specifically required by the examiner.
Amendments in provisional applications are not normally made. If an amendment is made to a provisional application, however, it must comply with the provisions of 37 CFR 1.121. Any amendments to a provisional application will be placed in the provisional application file, but may not be entered.
II. MANNER OF MAKING AMENDMENTS UNDER 37 CFR 1.121
All amendments filed on or after July 30, 2003 must comply with 37 CFR 1.121 as revised in the notice of final rule making published in the Federal Register on June 30, 2003 at 65 FR 38611. The manner of making amendments has been revised to assist in the implementation of beginning-to-end electronic image processing of patent applications. Specifically, changes have been made to facilitate electronic image data capture and processing and streamline the patent application process. If an amendment filed on or after July 30, 2003 does not comply with revised 37 CFR 1.121, the Office will notify applicants via a Notice of Non-Compliant Amendment that the amendment is not accepted.
The revised amendment practice is summarized as follows.
A. Amendment Sections
Each section of an amendment document (e.g., Specification Amendments, Claim Amendments, Drawing Amendments, and Remarks) must begin on a separate sheet to facilitate separate indexing and electronic scanning of each section of an amendment document for placement in an image file wrapper.
It is recommended that applicants use the following format when submitting amendment papers. The amendment papers should include, in the following order:
- (A) a cover sheet, or introductory comments, providing the appropriate application information (e.g., application number, applicant, filing date) and which serves as a table of contents to the amendment document by indicating on what page of the amendment document each of the following sections begin;
- (B) a section (must begin on a separate sheet) entitled "Amendments to the Specification" (if there are any amendments to the specification). This section should include all amendments to the specification including amendments to the abstract of the disclosure. A more detailed discussion is provided in subsection II.B below;
- (C) a section (must begin on a separate sheet) entitled "Amendments to the Claims" which includes a complete listing of all claims ever presented in the application (if there are any amendments to the claims). A more detailed discussion is provided in subsection II.C below;
- (D) a section (must begin on a separate sheet) entitled "Amendments to the Drawings" in which all changes to the drawings are discussed (if there are any amendments to the drawings). A more detailed discussion is provided in subsection II.D below;
- (E) a remarks section (must begin on a separate sheet); and
- (F) any drawings being submitted including any "Replacement Sheet," "New Sheet," or "Annotated Sheet."
B. Amendments to the Specification
Amendments to the specification, other than the claims, computer listings (37 CFR 1.96 ) and sequence listings (37 CFR 1.825 ), must be made by adding, deleting or replacing a paragraph, by replacing a section, or by a substitute specification. In order to delete, replace or add a paragraph to the specification of an application, the amendment must unambiguously identify the paragraph to be modified either by paragraph number (see MPEP § 608.01), page and line, or any other unambiguous method and be accompanied by any replacement or new paragraph(s). Replacement paragraphs must include markings to show the changes. A separate clean version of any replacement paragraphs is not required. Any new paragraphs must be presented in clean form without any markings (i.e., underlining).
Where paragraph numbering has been included in an application as provided in 37 CFR 1.52(b)(6), applicants can easily refer to a specific paragraph by number when presenting an amendment. If a numbered paragraph is to be replaced by a single paragraph, the added replacement paragraph should be numbered with the same number of the paragraph being replaced. Where more than one paragraph is to replace a single original paragraph, the added paragraphs should be numbered using the number of the original paragraph for the first replacement paragraph, followed by increasing decimal numbers for the second and subsequent added paragraphs, e.g., original paragraph [0071] has been replaced with paragraphs [0071], [0071.1], and [0071.2]. If a numbered paragraph is deleted, the numbering of the subsequent paragraphs should remain unchanged.
37 CFR 1.121(b)(1)(ii) requires that the full text of any replacement paragraph be provided with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted subject matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show the deletion of five or fewer consecutive characters (e.g., [[eroor]]). The term "brackets" set forth in 37 CFR 1.121 means square brackets – [ ], and not parentheses – ( ). The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived (e.g., deletion of the number "4" must be shown as [[4]]). As an alternative to using double brackets, however, extra portions of text may be included before and after text being deleted, all in strike-through, followed by including and underlining the extra text with the desired change (e.g., number 4 as number 14 as). For added paragraphs, 37 CFR 1.121(b)(1)(iii) requires that the full text of any added paragraph(s) be presented in clean form without any underlining. Similarly, under 37 CFR 1.121(b)(1)(iv), a marked up version does not have to be supplied for any deleted paragraph(s). It is sufficient to merely indicate or identify any paragraph that has been deleted. The instruction to delete may identify a paragraph by its paragraph number, page and line number, or include a few words from the beginning, and end, or the paragraph, if needed for paragraph identification.
Applicants are also permitted to amend the specification by replacement sections (e.g., as provided in 37 CFR 1.77(b), 1.154(b), or 1.163(c) ). As with replacement paragraphs, the amended version of a replacement section is required to be provided with markings to show all the changes relative to the previous version of the section. The text of any added subject matter must be shown by underlining the added text. The text of any deleted subject matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show the deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived.
Specifically regarding amendments to the abstract of the disclosure, where the amendments to the abstract are minor in nature, the abstract should be provided as a marked-up version under 37 CFR 1.121(b)(2)(ii) using strike-through and underlining as the methods to show all changes relative to the immediate prior version. Where the abstract is being substantially rewritten and the amended abstract bears little or no resemblance to the previously filed version of the abstract, a new (substitute) abstract may be provided in clean form accompanied by an instruction for the cancellation of the previous version of the abstract. The text of the new abstract must not be underlined. It would be counterproductive for applicant to prepare and provide an abstract so riddled with strike-through and underlining that its meaning and language are obscured from view and comprehension. Whether supplying a marked-up version of a previous abstract or a clean form new abstract, the abstract must comply with 37 CFR 1.72(b) regarding the length and placement of the abstract on a separate sheet of paper.
Applicants are also permitted to amend the specification by submitting a substitute specification, provided the requirements of 37 CFR 1.125(b) and (c) are met. Under 37 CFR 1.125, a clean version of the substitute specification, a separate marked up version showing the changes in the specification relative to the previous version, and a statement that the substitute specification contains no new matter are required.
Any previously deleted paragraph or section can only be reinstated by a subsequent amendment presenting the previously deleted subject matter. A direction by applicant to remove a previously entered amendment will not be permitted.
C. Amendments to the Claims
Each amendment document that includes a change to an existing claim, including the deletion of an existing claim, or submission of a new claim, must include a complete listing of all claims ever presented (including previously canceled and non-entered claims) in the application. After each claim number, the status identifier of the claim must be presented in a parenthetical expression, and the text of each claim under examination as well as all withdrawn claims (each with markings if any, to show current changes) must be presented. The listing will serve to replace all prior versions of the claims in the application.
- (A) Status Identifiers: The current status of all of the claims in the application, including any previously canceled or withdrawn claims, must be given. Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), or (not entered). The status identifier (withdrawn – currently amended) is also acceptable for a withdrawn claim that is being currently amended. See paragraph (E) below for acceptable alternative status identifiers.
- Claims added by a preliminary amendment must have the status identifier (new) instead of (original), even when the preliminary amendment is present on the filing date of the application and such claim is treated as part of the original disclosure. If applicant files a subsequent amendment, applicant must use the status identifier (previously presented) if the claims are not being amended, or (currently amended) if the claims are being amended, in the subsequent amendment. Claims that are canceled by a preliminary amendment that is present on the filing date of the application are required to be listed and must have the status identifier (canceled) in the preliminary amendment and in any subsequent amendment.
- The status identifier (not entered) is used for claims that were previously proposed in an amendment (e.g., after-final) that was denied entry.
- In an amendment submitted in a U.S. national stage application, claims that were present on the international filing date or rectified pursuant to PCT Rule 91 must have the status identifier (original); claims that were amended or added under PCT Article 19 or 34 with effect in the U.S. national stage application must have the status identifier (previously presented); and claims that were canceled pursuant to PCT Article 19 or 34 with effect in the U.S. national stage application must have the status identifier (canceled). If the amendment submitted in the U.S. national stage application is making a change in a claim, the status identifier (currently amended) must be used for that claim.
- For any amendment being filed in response to a restriction or election of species requirement and any subsequent amendment, any claims which are non-elected must have the status identifier (withdrawn). Any non-elected claims which are being amended must have either the status identifier (withdrawn) or (withdrawn – currently amended) and the text of the non-elected claims must be presented with markings to indicate the changes. Any non-elected claims that are being canceled must have the status identifier (canceled).
- (B) Markings to Show the Changes: All claims being currently amended must be presented with markings to indicate the changes that have been made relative to the immediate prior version. The changes in any amended claim must be shown by strike-through (for deleted matter) or underlining (for added matter) with 2 exceptions: (1) for deletion of five or fewer consecutive characters, double brackets may be used (e.g., [[eroor]]); (2) if strike-through cannot be easily perceived (e.g., deletion of number "4" or certain punctuation marks), double brackets must be used (e.g., [[4]]). As an alternative to using double brackets, however, extra portions of text may be included before and after text being deleted, all in strike-through, followed by including and underlining the extra text with the desired change (e.g., number 4 as number 14 as ). An accompanying clean version is not required and should not be presented. Only claims of the status "currently amended" or "withdrawn" will include markings.
- Any claims added by amendment must be indicated as "new" and the text of the claim must not be underlined.
- (C) Claim Text: The text of all pending claims under examination and withdrawn claims must be submitted each time any claim is amended. The text of pending claims not being currently amended, including withdrawn claims, must be presented in clean version, i.e., without any markings. Any claim presented in clean version will constitute an assertion that it has not been changed relative to the immediate prior version except to omit markings that may have been present in the immediate prior version of the claims. A claim being canceled must be indicated as "canceled;" the text of the claim must not be presented. Providing an instruction to cancel is optional. Canceled and not entered claims must be listed by only the claim number and status identifier, without presenting the text of the claims. When applicant submits the text of canceled or not-entered claims in the amendment, the Office may accept such an amendment, if the amendment otherwise complies with 37 CFR 1.121, instead of sending out a notice of non-compliant amendment to reduce the processing time.
- (D) Claim Numbering: All of the claims in each amendment paper must be presented in ascending numerical order. Consecutive canceled or not entered claims may be aggregated into one statement (e.g., Claims 1 – 5 (canceled)).
A canceled claim can be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number. The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. For example, when applicant cancels all of the claims in the original specification and adds a new set of claims, the claim listing must include all of the canceled claims with the status identifier (canceled) (the canceled claims may be aggregated into one statement). The new claims must be numbered consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not) in compliance with 37 CFR 1.126.
| Example of listing of claims: |
| Claims 1-5 (canceled) |
| Claim 6 (withdrawn): A process for molding a bucket. |
| Claim 7 (previously presented): A bucket with a handle. |
| Claim 8 (currently amended): A bucket with a green blue handle. |
| Claim 9 (withdrawn): The process for molding a bucket of claim 6 using molten plastic material. |
| Claim 10 (original): The bucket of claim 8 with a wooden handle. |
| Claim 11 (canceled) |
| Claim 12 (previously presented): A bucket having a circumferential upper lip. |
| Claim 13 (not entered) |
| Claim 14 (new): A bucket with plastic sides and bottom. |
- (E) Acceptable Alternative Status Identifiers: To prevent delays in prosecution, the Office may waive certain provisions of 37 CFR 1.121 and accept alternative status identifiers not specifically set forth in 37 CFR 1.121(c). Accordingly claim listings that include alternative status identifiers as set forth below will be accepted if the amendment otherwise complies with 37 CFR 1.121. See Acceptance of Certain Non-Compliant Amendments Under 37 CFR 1.121(c), 1296 OG 27 (July 5, 2005).
| Status Identifiers Set Forth in 37 CFR 1.121(c) | Acceptable Alternatives |
|---|---|
| 1. Original | Original Claim; and Originally Filed Claim |
| 2. Currently amended | Presently amended; and Currently amended claim |
| 3. Canceled | Canceled without prejudice; Cancel; Cancelled; Canceled herein; Previously cancelled; Canceled claim; Deleted; and Previously canceled |
| 4. Withdrawn | Withdrawn from consideration; Withdrawn – new; Withdrawn claim; and Withdrawn – currently amended |
| 5. Previously presented | Previously amended; Previously added; Previously submitted; and Previously presented claim |
| 6. New | Newly added; and New claim |
| 7. Not entered | Not entered claim |
The Office may also accept additional variations of the status identifiers provided in 37 CFR 1.121(c) not listed above if an Office personnel determines that the status of the claims is accurate and clear. When accepting alternative status identifiers, the examiner is not required to correct the status identifiers using an examiner’s amendment. Applicant will not be notified and will not be required to submit a corrective compliant amendment. The examiner does not need to make a statement on the record that the alternative status identifiers have been accepted.
D. Amendments to the Drawing
Any changes to an application drawing must comply with 37 CFR 1.84 and must be submitted on a replacement sheet of drawings, even when applicant is only submitting better quality drawings without any substantive changes. Any additional new drawings must be submitted on a new sheet of drawings. The replacement or new sheet of drawings must be an attachment to the amendment document and must be identified in the top margin as "Replacement Sheet." The new drawing sheet must be identified in the top margin as "New Sheet." The replacement drawing sheet must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. The figure or figure number of the amended drawing(s) must not be labeled as "amended." A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Sheet" and must be presented in the amendment or remarks section that explains the change to the drawings. A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
An explanation of the changes made must be presented in the "Amendments to the Drawings" or the remarks section of the amendment document. If the changes to the drawing figure(s) are not approved by the examiner, applicant will be notified in the next Office action. Applicant must amend the brief and detailed description of drawings sections of the specification if they are not consistent with the changes to the drawings. For example, when applicant files a new drawing sheet, an amendment to the specification is required to add the brief and detailed description of the new drawings.
The proposed drawing correction practice has been eliminated. For any changes to the drawings, applicant is required to submit a replacement sheet of drawings with the changes made. No proposed changes in red ink should be submitted. Any proposed drawing corrections will be treated as non-compliant under 37 CFR 1.121(d). In response to any drawing objections, applicant should submit drawing changes by filing a replacement sheet of drawings or a new sheet of drawings with the corrections made. A letter to the official draftsman is no longer required.
Drawing submissions without any amendments to the specification and claims after allowance should be forwarded to the Office of Data Management.
E. Examiner’s Amendments
37 CFR 1.121(g) permits the Office to make amendments to the specification, including the claims, by examiner’s amendments without paragraph/section/claim replacement in the interest of expediting prosecution and reducing cycle time. Additions or deletions of subject matter in the specification, including the claims, may be made by instructions to make the change at a precise location in the specification or the claims. Examiner’s amendments do not need to comply with paragraphs (b)(1), (b)(2), or (c) of 37 CFR 1.121. See MPEP § 1302.04.
If a non-compliant amendment would otherwise place the application in condition for allowance, the examiner may enter the non-compliant amendment and provide an examiner’s amendment to correct the non-compliance (e.g., an incorrect status identifier). Similarly, if an amendment under 37 CFR 1.312 after allowance is non-compliant under 37 CFR 1.121 and the entry of the amendment would have been otherwise recommended, the examiner may enter the amendment and correct the non-compliance (e.g., an incorrect status identifier) using an examiner’s amendment. See subsection "F. Non-Compliant Amendments" for more information on non-compliant amendments. For example, if some of the status identifiers are incorrect in an amendment, the examiner may enter the non-compliant amendment and:
- (A) provide a claim listing presenting all of the claims with the proper status identifiers in an examiner’s amendment;
- (B) print a copy of the claim listing of the non-compliant amendment, cross out the improper status identifiers, write in the correct status identifiers and include it as an attachment to an examiner’s amendment; or
- (C) correct the improper status identifiers by instructions in an examiner’s amendment.
The examiner’s amendment should include the reason why the amendment is non-compliant and indicate how it was corrected. Authorization from the applicant or attorney/agent of record and appropriate extensions of time are not required if the changes are not substantive (e.g., corrections of format errors or typographical errors). Such an examiner’s amendment may be made after the time period for reply, or after the shortened statutory period without any extensions of time, as long as the non-compliant amendment was timely filed.
Authorization and appropriate extensions of time are required if the changes made in the examiner’s amendment are substantive (e.g., the examiner’s amendment would include a cancellation of a claim or change the scope of the claims). The authorization must be given within the time period for reply set forth in the last Office action. See MPEP § 1302.04.
F. Non-Compliant Amendments
If an amendment submitted on or after July 30, 2003, fails to comply with 37 CFR 1.121 (as revised on June 30, 2003), the Office will notify applicant by a Notice of Non-Compliant Amendment, Form PTOL-324, that the amendment fails to comply with the requirements of 37 CFR 1.121 and identify: (1) which section of the amendment is non-compliant (e.g., the amendments to the claims section); (2) items that are required for compliance (e.g., a claim listing in compliance with 37 CFR 1.121(c) ); and (3) the reasons why the section of the amendment fails to comply with 37 CFR 1.121 (e.g., the status identifiers are missing). The type of amendment will determine whether applicant will be given a period of time in which to comply with the rule and whether applicant’s reply to a notice should consist of the corrected section of the amendment (e.g., a complete claim listing in compliance of 37 CFR 1.121(c) ) instead of the entire corrected amendment. If the noncompliant amendment is:
- (A) A preliminary amendment filed after the filing date of the application , the technical support staff (TSS) will send the notice which sets a time period of two months for reply. No extensions of time are permitted. Failure to submit a timely reply will result in the application being examined without entry of the preliminary amendment. Applicant’s reply is required to include the corrected section of the amendment.
- (B) A preliminary amendment that is present on the filing date of the application , the Office of Patent Application Processing (OPAP) will send applicant a notice (e.g., Notice to File Corrected Application Papers) which sets a time period of 2 months for reply. Extensions of time are available under 37 CFR 1.136(a). Failure to reply to the (OPAP) notice will result in abandonment of the application. Applicant’s reply is required to include either a substitute specification under 37 CFR 1.125 if the amendment is to the specification, or a complete claim listing under 37 CFR 1.121(c) if the amendment is to the claims.
- (C) A non-final amendment including an amendment filed as a submission for an RCE, the TSS will send the notice which sets a time period of two months for reply. Extensions of time are available under 37 CFR 1.136(a). Failure to reply to this notice will result in abandonment of the application. Applicant’s reply is required to include the corrected section of the amendment.
- (D) An after-final amendment , the amendment will be forwarded in unentered status to the examiner. In addition to providing reasons for non-entry when the amendment is not in compliance with 37 CFR 1.116 (e.g., the proposed amendment raises new issues that would require further consideration and/or search), the examiner should also indicate in the advisory action any non-compliance in the after-final amendment. The examiner should attach a Notice of Non-Compliant Amendment to the advisory action. The notice provides no new time period for correcting the non-compliance. The time period for reply continues to run from the mailing of the final Office action. Applicant still needs to respond to the final Office action to avoid abandonment of the application. If the applicant wishes to file another after-final amendment, the entire corrected amendment (not only the corrected section of the amendment) must be submitted within the time period set forth in the final Office action.
- (E) A supplemental amendment filed when there is no suspension of action under 37 CFR 1.103(a) or (c), the amendment will be forwarded to the examiner. Such a supplemental amendment is not entered as a matter of right. See 37 CFR 1.111(a)(2)(ii). The examiner will notify the applicant if the amendment is not approved for entry. The examiner may use form paragraph 7.147. See MPEP § 714.03(a).
- (F) A supplemental amendment filed within a suspension period under 37 CFR 1.103(a) or (c) (e.g., applicant requested a suspension of action at the time of filing an RCE), the TSS will send the notice which sets a time period of two months for reply. No extensions of time are permitted. Failure to submit a timely reply will result in the application being examined without entry of the supplemental amendment. Applicant’s reply is required to include the corrected section of the amendment.
- (G) An amendment filed in response to a Quayle action , the TSS will send the notice which sets a time period of two months for reply. Extensions of time are available under 37 CFR 1.136(a). Failure to reply to this notice will result in abandonment of the application. Applicant’s reply is required to include the corrected section of the amendment.
- (H) An after-allowance amendment under 37 CFR 1.312, the amendment will be forwarded to the examiner. Amendments under 37 CFR 1.312 are not entered as matter of right. The examiner will notify the applicant if the amendment is not approved for entry. The examiner may attach a Notice of Non-Compliant Amendment (37 CFR 1.121 ) to the form PTO-271, Response to Rule 312 Communication (see MPEP § 714.16(d)). The notice provides no new time period. If applicant wishes to file another after-allowance amendment under 37 CFR 1.312, the entire corrected amendment must be submitted before the payment of the issue fee.
Any amendments (including after-final amendments) that add new claims in excess of the number of claims previously paid for in an application must be accompanied by the payment of the required excess claims fees. Failure to pay the excess claims fees will result in non-entry of the amendment. See MPEP § 607.
G. Entry of Amendments, Directions for, Defective
The directions for the entry of an amendment may be defective. Examples include inaccuracy in the paragraph number and/or page and line designated, or a lack of precision where the paragraph or section to which insertion of the amendment is directed occurs. If the correct place of entry is clear from the context, the amendatory paper will be properly amended in the Technology Center and notation thereof, initialed in ink by the examiner, who will assume full responsibility for the change, will be made on the margin of the amendatory paper. In the next Office action, the applicant should be informed of this alteration in the amendment and the entry of the amendment as thus amended. The applicant will also be informed of the nonentry of an amendment where defective directions and context leave doubt as to the intent of applicant.
H. Amendment of Amendments
When a replacement paragraph or section of the specification is to be amended, it should be wholly rewritten and the original insertion canceled. A marked-up version of the replacement paragraph or section of the specification should be presented using underlining to indicate added subject matter and strike-through to indicate deleted subject matter. Matter canceled by amendment can be reinstated only by a subsequent amendment presenting the canceled matter as a new insertion. A claim cancelled by amendment (deleted in its entirety) may be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number.
III. AMENDMENT IN REEXAMINATION PROCEEDINGS AND REISSUE APPLICATIONS
Amendments in reissue applications must be made in accordance with 37 CFR 1.173. Amendments in ex parte and inter partes reexamination proceedings must be made in accordance with 37 CFR 1.530. In patent-owner-filed ex parte reexaminations, the patent owner may amend at the time of the request for ex parte reexamination in accordance with 37 CFR 1.510(e). In any ex parte reexamination proceeding, no amendment or response can be filed between the date of the request for ex parte reexamination and the order for ex parte reexamination. See 37 CFR 1.530(a). Following the order for ex parte reexamination under 37 CFR 1.525 and prior to the examination phase of ex parte reexamination proceeding, an amendment may be filed only with the patent owner’s statement under 37 CFR 1.530(b). During the examination phase of the ex parte reexamination proceeding, an amendment may be filed:
- (A) after the first examination as specified in 37 CFR 1.112;
- (B) after final rejection or an appeal has been taken, if the amendment meets the criteria of 37 CFR 1.116; and
- (C) when and as specifically required by the examiner.
See also MPEP § 714.12.
For amendments in ex parte reexamination proceedings see MPEP § 2250 and § 2266. For amendments by patent owner in an inter partes reexamination proceeding, see MPEP § 2666.01 and § 2672. For amendments in reissue applications, see MPEP § 1453.
714.01 Signatures to Amendments [R-08.2012]
An amendment must be signed by a person having authority to prosecute the application. An unsigned or improperly signed amendment will not be entered. See MPEP § 714.01(a).
To facilitate any telephone call that may become necessary, it is recommended that the complete telephone number with area code and extension be given, preferably near the signature.
714.01(a) Unsigned or Improperly Signed Amendment [R-10.2019]
37 C.F.R. 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
*****
- (b) Amendments and other papers . Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:
- (1) A patent practitioner of record;
- (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34; or
- (3) The applicant (§ 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
*****
37 C.F.R. 1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings, and other proceedings (applicable to applications filed before September 16, 2012).
*****
- (b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:
- (1) A patent practitioner of record appointed in compliance with § 1.32(b);
- (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;
- (3) An assignee as provided for under § 3.71(b) of this chapter; or
- (4) All of the applicants (§ 1.41(b) ) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.
*****
An unsigned amendment or one not properly signed by a person having authority to prosecute the application is not entered. This applies, for instance, where the amendment is signed by only one of two joint inventors and the one signing has not been given a power of attorney by the other inventor.
When an unsigned or improperly signed amendment is received the amendment will be listed in the contents of the application file, but not entered. The examiner will notify applicant of the status of the application, advising him or her to furnish a duplicate amendment properly signed or to ratify the amendment already filed. In an application not under final rejection, applicant should be given a two month time period in which to ratify the previously filed amendment (37 CFR 1.135(c) ).
Applicants may be advised of unsigned amendments by use of form paragraph 7.84.01.
¶ 7.84.01 Paper Is Unsigned
The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
Sometimes problems arising from unsigned or improperly signed amendments may be disposed of by calling in the local representative of the attorney or agent of record, since he or she may have the authority to sign the amendment.
An amendment signed by a practitioner who has been suspended or excluded from practice under the provisions of 37 CFR Part 11 is not entered. The file and unentered amendment are submitted to the Office of Enrollment and Discipline for appropriate action.
714.01(b) [Reserved]
714.01(c) Signed by Attorney or Agent Not of Record [R-11.2013]
A registered attorney or agent acting in a representative capacity under 37 CFR 1.34, may sign amendments even though he or she does not have a power of attorney in the application. See MPEP § 402.03 .
714.01(d) Amendment Signed by Applicant but Not by Attorney or Agent of Record [R-11.2013]
If an amendment signed by the applicant is received in an application in which there is a duly appointed attorney or agent, the amendment should be entered and acted upon. Attention should be called to 37 CFR 1.33 in patent applications. Two copies of the action should be prepared, one being sent to the attorney and the other directly to the applicant. The notation: "Copy to applicant" should appear on the original and on both copies.
714.01(e) Amendments Before First Office Action [R-10.2019]
37 C.F.R. 1.115 Preliminary amendments.
- (a) A preliminary amendment is an amendment that is received in the Office (§ 1.6 ) on or before the mail date of the first Office action under § 1.104. The patent application publication may include preliminary amendments (§ 1.215(a) ).
- (1) A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application.
- (2) A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application.
*****
A preliminary amendment is an amendment that is received in the Office on or before the mail date of the first Office action under 37 CFR 1.104. See 37 CFR 1.115(a). For applications filed on or after September 21, 2004 (the effective date of 37 CFR 1.115(a)(1) ), a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application. For applications filed before September 21, 2004, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application if the preliminary amendment was referred to in the first executed oath or declaration under 37 CFR 1.63 filed in the application. See MPEP § 602. Any amendment filed after the filing date of the application is not part of the original disclosure of the application. See MPEP § 608.04 et seq. regarding new matter. When the Office publishes the application under 35 U.S.C. 122(b), the Office may include preliminary amendments in the patent application publication. See MPEP § 1121.
If a preliminary amendment is filed in a format that cannot be included in the publication, the Office of Patent Application Processing (OPAP) will issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes. See 37 CFR 1.115(a)(1) and 1.215. The only format for an amendment to the specification (other than the claims) that is usable for publication is a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125. As a result, the Office has revised its procedures to mail a notice (e.g., "Notice to File Corrected Application Papers" ) requiring a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125, if an applicant included a preliminary amendment to the specification (other than the claims) on filing.
For applications filed prior to September 16, 2012, where applicant intends to claim the benefit of a prior application under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78, the specific reference to the benefit application may be submitted in an application data sheet (ADS) under 37 CFR 1.76 or in a preliminary amendment to the first sentence(s) of the specification. See 37 CFR 1.78(h). If the specific reference is submitted in a preliminary amendment, a substitute specification will not be required if the preliminary amendment only adds or amends a benefit claim to a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 119(e). If an applicant receives a notice from OPAP (e.g., "Notice to File Corrected Application Papers" ) requiring a substitute specification because a preliminary amendment was filed that only adds or amends a benefit claim, applicant may reply to the notice explaining that a substitute specification should not have been required because the amendment was only to add or amend a benefit claim. In order to avoid abandonment, applicant should file a reply with the required substitute specification or an explanation that the substitute specification is not necessary because the preliminary amendment only adds or amends a benefit claim. If the preliminary amendment contains other amendments to the specification (other than the claims), a substitute specification will be required, and a reply to a notice requiring a substitute specification without the substitute specification will be treated as an incomplete reply with no new time period for reply being provided. Note that the above does not apply to applications filed on or after September 16, 2012, because the reference to a prior application as required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78, must be submitted in an application data sheet (ADS) under 37 CFR 1.76.
Requiring a substitute specification (with all preliminary amendments made therein) is also important to ensure that applicants do not circumvent the limitations upon redacted publications set forth in 35 U.S.C. 122(b)(2)(B)(v). As preliminary amendments to the specification, excluding the claims, cannot be easily published, the Office must require a substitute specification whenever an application is filed with a preliminary amendment to the specification, excluding the claims, in order to ensure that the application, including any new matter added by way of a preliminary amendment included on the filing date of the application, is published.
Because a preliminary amendment to the claims or abstract in compliance with 37 CFR 1.121(c) or 1.121(b)(2) will include a complete claim listing or replacement abstract, the Office can publish the amended claims or the replacement abstract as submitted in the preliminary amendment without a substitute specification being filed. Applicants should note, however, that there is no need to file a preliminary amendment to the claims on filing. By making the new claim set part of the originally filed specification, applicant may avoid having to pay an application size fee, as both the specification (including the claims) and any preliminary amendment are used in counting the number of pages for purposes of 37 CFR 1.16(s). The claim set submitted should be the set of claims intended to be examined, and when the claims submitted on filing are part of the specification (on sequentially numbered pages of the specification (see 37 CFR 1.52(b)(5) )), no status identifiers and no markings showing the changes need to be used.
A preliminary amendment filed with a submission to enter the national stage of an international application under 35 U.S.C. 371 is not part of the original disclosure under 37 CFR 1.115(a) because it was not present on the international filing date accorded to the application under PCT Article 11. See MPEP § 1893.03(b). Accordingly, a "Notice to File Corrected Application Papers" requiring a substitute specification will not ordinarily be mailed in an international application even if the national stage submission includes a preliminary amendment.
Since a request for continued examination (RCE) is not a new application, an amendment filed before the first Office action after the filing of the RCE is not a preliminary amendment. See MPEP § 706.07(h). Any amendment canceling claims in order to reduce the excess claims fees should be filed before the expiration of the time period set forth in a notice that requires excess claims fees. Such an amendment would be effective to reduce the number of claims to be considered in calculating the excess claims fees. See MPEP § 607.
I. PRELIMINARY AMENDMENTS MUST COMPLY WITH 37 CFR 1.121
Any preliminary amendment, regardless of when it is filed, must comply with 37 CFR 1.121, e.g., the preliminary amendment must include a complete listing of all of the claims and each section of the amendment must begin on a separate sheet of paper. See MPEP § 714. Preliminary amendments made in a transmittal letter of the application will not comply with 37 CFR 1.121. For example, applicants should include the reference to a prior filed application in the first sentence(s) of the specification following the title (for applications filed prior to September 16, 2012) or in an application data sheet in compliance with 37 CFR 1.78 instead of submitting the reference in a preliminary amendment in a transmittal letter. See MPEP § 211 et seq. If a preliminary amendment filed after the filing date of the application fails to comply with 37 CFR 1.121, applicant will be notified by way of a Notice of Non-Compliant Amendment and given a non-extendable period of two months to bring the amendment into compliance with 37 CFR 1.121. If the applicant takes no corrective action, examination of the application will commence without consideration of the proposed changes in the non-compliant preliminary amendment. If a preliminary amendment that is present on the filing date of the application fails to comply with 37 CFR 1.121, the Office of Patent Application Processing (OPAP) will notify applicant of the non-compliance and give a two-month time period to correct the non-compliance to avoid the abandonment of the application. See MPEP § 714.
Filing a preliminary amendment is not recommended because the changes made by the preliminary amendment may not be reflected in the patent application publication even if the preliminary amendment is referred to in an oath or declaration. If there is insufficient time to have the preliminary amendment be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun, the preliminary amendment will not be reflected in the patent application publication. Technical preparations for publication of an application generally begin four months prior to the projected date of publication. For more information on publication of applications, see MPEP § 1121. Applicants may avoid preliminary amendments by incorporating any desired amendments into the text of the specification including a new set of claims, even where the application is a continuation or divisional application of a previously filed patent application. In such a continuation or divisional application, a clean copy of a specification (i.e., reflecting amendments made in the parent application) may be submitted together with a copy of the oath or declaration from the previously filed application. See 37 CFR 1.63(d)(1) and MPEP § 201.06(c).
II. PRELIMINARY AMENDMENTS PRESENT ON THE FILING DATE OF THE APPLICATION
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.
For applications filed on or after September 21, 2004 (the effective date of 37 CFR 1.115(a)(1) ), a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application.
For applications filed before September 21, 2004, a preliminary amendment that was present on the filing date of the application is part of the original disclosure of the application if the preliminary amendment was referred to in the first oath or declaration in compliance with 37 CFR 1.63 filed in the application. See MPEP §§ 602 and 608.04(b). If the preliminary amendment was not referred to in the oath or declaration, applicant should submit a supplemental oath or declaration under 37 CFR 1.67 referring to both the application and the preliminary amendment filed with the original application. A surcharge under 37 CFR 1.16(f) will also be required unless it has been previously paid.
III. PRELIMINARY AMENDMENTS MUST BE TIMELY
Any preliminary amendments should either accompany the application or be filed after the application has received its application number and filing date so that the preliminary amendments would include the appropriate identifications (e.g., the application number and filing date). See MPEP § 502. Any amendments filed after the mail date of the first Office action is not a preliminary amendment. If the date of receipt (37 CFR 1.6 ) of the amendment is later than the mail date of the first Office action and is not responsive to the first Office action, the Office will not mail a new Office action, but simply advise the applicant that the amendment is nonresponsive to the first Office action and that a responsive reply must be timely filed to avoid abandonment. See MPEP § 714.03.
IV. PRELIMINARY AMENDMENTS MAY BE DISAPPROVED
37 C.F.R. 1.115 Preliminary amendments.
*****
- (b) A preliminary amendment in compliance with § 1.121 will be entered unless disapproved by the Director.
- (1) A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
- (2) A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include:
- (i) The state of preparation of a first Office action as of the date of receipt (§ 1.6 ) of the preliminary amendment by the Office; and
- (ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
- (3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:
- (4) The time periods specified in paragraph (b)(3) of this section are not extendable.
A preliminary amendment filed in compliance with 37 CFR 1.121 will be entered unless it is disapproved by the Director. A preliminary amendment will be disapproved by the Director if the preliminary amendment cancels all the claims in the application without presenting any new or substitute claims. A preliminary amendment may also be disapproved by the Director if the preliminary amendment unduly interferes with the preparation of an Office action. 37 CFR 1.115(b).
A. Cancellations of All the Claims
If applicant files a preliminary amendment (whether submitted prior to, on or after the filing date of the application) seeking cancellation of all claims in the application without presenting any new claims, the Office will not enter such an amendment. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1369 (Fed. Cir. 2001), 37 CFR 1.115(b)(1), and MPEP § 601.01(e). Thus, the application will not be denied a filing date merely because such a preliminary amendment was submitted on filing. For fee calculation purposes, the Office will treat such an application as containing only a single claim. In most cases, an amendment that cancels all the claims in the application without presenting any new claims would not meet the requirements of 37 CFR 1.121(c) that requires a complete claim listing. See MPEP § 714. The Office will send a notice of non-compliant amendment (37 CFR 1.121 ) to applicant and require an amendment in compliance with 37 CFR 1.121.
B. Unduly Interferes With the Preparation of an Office Action
Once the examiner has started to prepare a first Office action, entry of a preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of the first Office action. Applicants are encouraged to file all preliminary amendments as soon as possible. Entry of a preliminary amendment will not be disapproved under 37 CFR 1.115(b)(2) if it is filed no later than:
- (A) 3 months from the filing date of the application under 37 CFR 1.53(b);
- (B) 3 months from the date the national stage is entered as set forth in 37 CFR 1.491 in an international application;
- (C) the filing date of a CPA under 37 CFR 1.53(d) in a design application; or
- (D) the last day of any suspension period requested by applicant under 37 CFR 1.103 (see MPEP § 709).
Even if the examiner has spent a significant amount of time preparing the first Office action, entry of a preliminary amendment filed within these time periods should not be disapproved under 37 CFR 1.115(b)(2). These time periods are not extendable. See 37 CFR 1.115(b)(4).
If a preliminary amendment is filed after these time periods and the conditions set forth below are met, entry of the preliminary amendment may be denied subject to the approval of the supervisory patent examiner (MPEP § 1002.02(d)).
1. When Disapproval is Appropriate
The factors that will be considered for denying entry of preliminary amendments under 37 CFR 1.115 include:
- (A) The state of preparation of a first Office action as of the date of receipt (37 CFR 1.6 ) of the preliminary amendment; and
- (B) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
The entry of a preliminary amendment that would unduly interfere with the preparation of an Office action may be denied if the following two conditions are met:
- (A) the examiner has devoted a significant amount of time on the preparation of an Office action before the amendment is received in the Office (i.e., the 37 CFR 1.6 receipt date of the amendment); and
- (B) the entry of the amendment would require significant additional time in the preparation of the Office action.
For example, if the examiner has spent a significant amount of time to conduct a prior art search or draft an Office action before a preliminary amendment is received by the Office, the first condition is satisfied. Entry of the amendment may be denied if it:
- (A) amends the claims;
- (B) adds numerous new claims;
- (C) amends the specification to change the scope of the claims;
- (D) amends the specification so that a new matter issue would be raised;
- (E) includes arguments;
- (F) includes an affidavit or declaration under 37 CFR 1.131 or 37 CFR 1.132; or
- (G) includes evidence traversing rejections from a prior Office action in the parent application,
and would require the examiner to spend significant additional time to conduct another prior art search or revise the Office action (i.e., the second condition is satisfied). This list is not an exhaustive list, and the entry of a preliminary amendment may be denied in other situations that satisfy the two conditions set forth above. Once these conditions are met, the examiner should obtain the approval of the SPE before the entry of the amendment may be denied.
2. When Disapproval is Inappropriate
Denying entry of a preliminary amendment under 37 CFR 1.115(b)(2) is inappropriate if either:
- (A) the examiner has NOT devoted a significant amount of time on the preparation of an Office action before the amendment is received in the Office (i.e., the 37 CFR 1.6 receipt date of the amendment); or
- (B) the entry of the amendment would NOT require significant additional time in the preparation of the Office action.
Thus, the amendment will be entered unless it is denied entry for other reasons such as those listed in MPEP § 714.19.
For example, if before the preliminary amendment is received in the Office, the examiner has not started working on the Office action or has started, but has merely inspected the file for formal requirements, then the examiner should enter and consider the preliminary amendment.
Furthermore, even if the examiner has devoted a significant amount of time to prepare an Office action prior to the date the preliminary amendment is received in the Office, it is not appropriate to disapprove the entry of such an amendment if it:
- (A) merely cancels some of the pending claims;
- (B) amends the claims to overcome rejections under 35 U.S.C. 112, second paragraph;
- (C) amends the claims to place the application in condition for allowance; or
- (D) only includes changes that were previously suggested by the examiner, and would not require the examiner to spend significant additional time to revise the Office action.
3. Form Paragraph
Form paragraph 7.46 should be used to notify applicant that the entry of a preliminary amendment is denied because the amendment unduly interferes with the preparation of an Office action.
¶ 7.46 Preliminary Amendment Unduly Interferes with the Preparation of an Office Action
The preliminary amendment filed on [1] was not entered because entry of the amendment would unduly interfere with the preparation of the Office action. See 37 CFR 1.115(b)(2). The examiner spent a significant amount of time on the preparation of an Office action before the preliminary amendment was received. On the date of receipt of the amendment, the examiner had completed [2].
Furthermore, entry of the preliminary amendment would require significant additional time on the preparation of the Office action. Specifically, entry of the preliminary amendment would require the examiner to [3].
A responsive reply (under 37 CFR 1.111 or 37 CFR 1.113 as appropriate) to this Office action must be timely filed to avoid abandonment.
If this is not a final Office action, applicant may wish to resubmit the amendment along with a responsive reply under 37 CFR 1.111 to ensure proper entry of the amendment.
Examiner Note:
1. In bracket 1, provide the date that the Office received the preliminary amendment (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8 ).
2. In bracket 2, provide an explanation on the state of preparation of the Office action as of the receipt date of the preliminary amendment. For example, where appropriate insert --the claim analysis and the search of prior art of all pending claims-- or --the drafting of the Office action and was waiting for the supervisory patent examiner’s approval--.
3. In bracket 3, provide a brief explanation of how entry of the preliminary amendment would require the examiner to spend significant additional time in the preparation of the Office action. For example, where appropriate insert --conduct prior art search in another classification area that was not previously searched and required-- or --revise the Office action extensively to address the new issues raised and the new claims added in the preliminary amendment--.
714.02 Must Be Fully Responsive [R-08.2012]
37 C.F.R. 1.111 Reply by applicant or patent owner to a non-final Office action.
- (a)
- (1) If the Office action after the first examination (§ 1.104 ) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
- (2) Supplemental replies.
- (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
- (A) Cancellation of a claim(s);
- (B) Adoption of the examiner suggestion(s);
- (C) Placement of the application in condition for allowance;
- (D) Reply to an Office requirement made after the first reply was filed;
- (E) Correction of informalities (e.g., typographical errors); or
- (F) Simplification of issues for appeal.
- (ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).
- (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
- (b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
- (c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.
In all cases where reply to a requirement is indicated as necessary for further consideration of the claims, or where allowable subject matter has been indicated in an application, a complete reply must either comply with the formal requirements or specifically traverse each one not complied with.
Drawing and specification corrections, presentation of a new oath and the like are generally considered as formal matters, although the filing of drawing corrections in reply to an objection to the drawings cannot normally be held in abeyance. However, the line between formal matter and those touching the merits is not sharp, and the determination of the merits of an application may require that such corrections, new oath, etc., be insisted upon prior to any indication of allowable subject matter.
The claims may be amended by canceling particular claims, by presenting new claims, or by rewriting particular claims as indicated in 37 CFR 1.121(c). The requirements of 37 CFR 1.111(b) must be complied with by pointing out the specific distinctions believed to render the claims patentable over the references in presenting arguments in support of new claims and amendments.
An amendment submitted after a second or subsequent non-final action on the merits which is otherwise responsive but which increases the number of claims drawn to the invention previously acted upon is not to be held not fully responsive for that reason alone. (See 37 CFR 1.112, MPEP § 706.)
The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06.
An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.
Replies to requirements to restrict are treated under MPEP § 818.
714.03 Amendments Not Fully Responsive, Action To Be Taken [R-10.2019]
37 C.F.R. 1.135 Abandonment for failure to reply within time period.
*****
- (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.
An examiner may treat an amendment not fully responsive to a non-final Office action by:
- (A) accepting the amendment as an adequate reply to the non-final Office action to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135;
- (B) notifying the applicant that the reply must be completed within the remaining period for reply to the non-final Office action (or within any extension pursuant to 37 CFR 1.136(a) ) to avoid abandonment; or
- (C) setting a new time period for applicant to complete the reply pursuant to 37 CFR 1.135(c).
The treatment to be given to the amendment depends upon:
- (A) whether the amendment is bona fide;
- (B) whether there is sufficient time for applicant’s reply to be filed within the time period for reply to the non-final Office action; and
- (C) the nature of the deficiency.
Where an amendment substantially responds to the rejections, objections, or requirements in a non-final Office action (and is a bona fide attempt to advance the application to final action) but contains a minor deficiency (e.g., fails to treat every rejection, objection, or requirement), the examiner may simply act on the amendment and issue a new (non-final or final) Office action. The new Office action may simply reiterate the rejection, objection, or requirement not addressed by the amendment (or otherwise indicate that such rejection, objection, or requirement is no longer applicable). This course of action would not be appropriate in instances in which an amendment contains a serious deficiency (e.g., the amendment is unsigned or does not appear to have been filed in reply to the non-final Office action). Where the amendment is bona fide but contains a serious omission, the examiner should: A) if there is sufficient time remaining for applicant’s reply to be filed within the time period for reply to the non-final Office action (or within any extension pursuant to 37 CFR 1.136(a) ), notify applicant that the omission must be supplied within the time period for reply; or B) if there is insufficient time remaining, issue an Office action setting a 2-month time period to complete the reply pursuant to 37 CFR 1.135(c). In either event, the examiner should not further examine the application on its merits unless and until the omission is timely supplied.
If a new time period for reply is set pursuant to 37 CFR 1.135(c), applicant must supply the omission within this new time period for reply (or any extensions under 37 CFR 1.136(a) thereof) in order to avoid abandonment of the application. The applicant, however, may file a continuing application during this period (in addition or as an alternative to supplying the omission), and may also file any further reply as permitted under 37 CFR 1.111.
Where there is sufficient time remaining in the period for reply (including extensions under 37 CFR 1.136(a) ), the applicant may simply be notified that the omission must be supplied within the remaining time period for reply. This notification should be made, if possible, by telephone, and, when such notification is made by telephone, an interview summary record (see MPEP § 713.04) must be completed and entered into the file of the application to provide a record of such notification. When notification by telephone is not possible, the applicant must be notified in an Office communication that the omission must be supplied within the remaining time period for reply. For example, when an amendment is filed shortly after an Office action has been mailed, and it is apparent that the amendment was not filed in reply to such Office action, the examiner need only notify the applicant (preferably by telephone) that a reply responsive to the Office action must be supplied within the remaining time period for reply to such Office action.
The practice set forth in 37 CFR 1.135(c) does not apply where there has been a deliberate omission of some necessary part of a complete reply; rather, 37 CFR 1.135(c) is applicable only when the missing matter or lack of compliance is considered by the examiner as being "inadvertently omitted." For example, if an election of species has been required and applicant does not make an election because he or she believes the requirement to be improper, the amendment on its face is not a "bona fide attempt to advance the application to final action" (37 CFR 1.135(c) ), and the examiner is without authority to postpone decision as to abandonment. Similarly, an amendment that would cancel all of the claims in an application and does not present any new or substitute claims is not a bona fide attempt to advance the application to final action. The Office will not enter such an amendment. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001). If there is time remaining to reply to the non-final Office action (or within any extension of time pursuant to 37 CFR 1.136(a) ), applicant will be notified to complete the reply within the remaining time period to avoid abandonment. Likewise, once an inadvertent omission is brought to the attention of the applicant, the question of inadvertence no longer exists. Therefore, a second Office action giving another new (2-month) time period to supply the omission would not be appropriate under 37 CFR 1.135(c).
37 CFR 1.135(c) authorizes, but does not require, an examiner to give the applicant a new time period to supply an omission. Thus, where the examiner concludes that the applicant is attempting to abuse the practice under 37 CFR 1.135(c) to obtain additional time for filing a reply (or where there is sufficient time for applicant’s reply to be filed within the time period for reply to the non-final Office action), the examiner need only indicate by telephone or in an Office communication (as discussed above) that the reply must be completed within the period for reply to the non-final Office action or within any extension pursuant to 37 CFR 1.136(a) to avoid abandonment.
The practice under 37 CFR 1.135(c) of giving applicant a time period to supply an omission in a bona fide reply does not apply after a final Office action. Amendments after final are approved for entry only if they place the application in condition for allowance or in better form for appeal. Otherwise, they are not approved for entry. See MPEP § 714.12 and § 714.13. Thus, an amendment should be denied entry if some point necessary for a complete reply under 37 CFR 1.113 (after final) was omitted, even if the omission was through an apparent oversight or inadvertence. Where a submission after a final Office action (e.g., an amendment under 37 CFR 1.116 ) does not place the application in condition for allowance, the period for reply under 37 CFR 1.113 continues to run until a reply under 37 CFR 1.113 (i.e., a notice of appeal or an amendment that places the application in condition for allowance) is filed. The nature of the omission (e.g., whether the amendment raises new issues, or would place the application in condition for allowance but for it being unsigned or not in compliance with 37 CFR 1.121 ) is immaterial. The examiner cannot give the applicant a time period under 37 CFR 1.135(c) to supply the omission; however, applicant may obtain additional time under 37 CFR 1.136(a) to file another or supplemental amendment in order to supply the omission.
When a reply to a final Office action substantially places the application in condition for allowance, an examiner may request that the applicant (or representative) authorize an examiner’s amendment to correct the omission and place the application in condition for allowance, in which case the date of the reply is the date of such authorization (and not the date the incomplete reply was filed). An examiner also has the authority to enter the reply, withdraw the finality of the last Office action, and issue a new Office action, which may be a non-final Office action, a final Office action (if appropriate), or an action closing prosecution on the merits in an otherwise allowable application under Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11, 435 OG 213 (Comm’r Pat. 1935) (if appropriate). These courses of action, however, are solely within the discretion of the examiner. It is the applicant’s responsibility to take the necessary action in an application under a final Office action to provide a complete reply under 37 CFR 1.113.
Where there is an informality as to the fee in connection with an amendment to a non-final Office action presenting additional claims, the applicant is notified by the technical support staff. See MPEP §§ 607 and 714.10.
Form paragraph 7.95, and optionally form paragraph 7.95.01, should be used where a bona fide reply to a non-final Office action is not fully responsive.
¶ 7.95 Bona Fide, Non-Responsive Amendments
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
Examiner Note:
This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.
¶ 7.95.01 Lack of Arguments in Response
Applicant should submit an argument under the heading "Remarks" pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.95.
2. This form paragraph is intended primarily for use in pro se applications.
714.03(a) Supplemental Amendment [R-10.2019]
37 C.F.R. 1.111 Reply by applicant or patent owner to a non-final Office action.
- (a)
- (1) If the Office action after the first examination (§ 1.104 ) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
- (2) Supplemental replies.
- (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
- (A) Cancellation of a claim(s);
- (B) Adoption of the examiner suggestion(s);
- (C) Placement of the application in condition for allowance;
- (D) Reply to an Office requirement made after the first reply was filed;
- (E) Correction of informalities (e.g., typographical errors); or
- (F) Simplification of issues for appeal.
- (ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).
- (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
*****
Applicants are encouraged to include a complete fully responsive reply in compliance with 37 CFR 1.111(b) to an outstanding Office action in the first reply to prevent the need for supplemental replies. Supplemental replies will not be entered as a matter of right, except when a supplemental reply is filed within a suspended period under 37 CFR 1.103(a) or (c) (e.g., a suspension of action requested by the applicant when filing an RCE). See MPEP § 709 regarding suspension of action. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
- (A) cancellation of a claim;
- (B) adoption of the examiner’s suggestions;
- (C) placement of the application in condition of allowance;
- (D) reply to an Office requirement made after the first reply was filed;
- (E) correction of informalities (e.g., typographical errors); or
- (F) simplification of issues for appeal.
When a supplemental reply is filed in sufficient time to be entered into the application before the examiner considers the prior reply, the examiner may approve the entry of the supplemental reply if, after a cursory review, the examiner determines that the supplemental reply is limited to one of the situations set forth above. This list is not exhaustive. The examiner has the discretion to approve the entry of a supplemental reply that is not listed above. If the supplemental reply is approved for entry, the examiner must annotate the reply "OK TO ENTER," with initials, and enter the annotated document into the electronic file wrapper. The examiner should clearly indicate in the subsequent Office action that the Office action is responsive to the applicant’s first reply and the applicant’s supplemental reply. If a supplemental reply is a non-compliant amendment under 37 CFR 1.121 (see MPEP § 714), the supplemental reply will not be entered. If a supplemental reply is not approved for entry, the examiner must annotate the reply "DO NOT ENTER," with initials, and enter the annotated document into the electronic file wrapper. The examiner should notify the applicant in the subsequent Office action that the supplemental reply was not entered. If applicant wishes to have a not-entered supplemental reply considered, applicant should include the changes in a reply filed in response to the next Office action. Applicant cannot simply request for its entry in the subsequent reply. The submission of a supplemental reply will cause a reduction of any accumulated patent term adjustment under 37 CFR 1.704(c)(8).
Examiners may use form paragraph 7.147 to notify applicants that a supplemental reply is not approved for entry and to explain the reason(s) for denying entry.
¶ 7.147 Supplemental Reply Not Approved for Entry
The supplemental reply filed on [1] was not entered because supplemental replies are not entered as a matter of right except as provided in 37 CFR 1.111(a)(2)(ii). [2].
Examiner Note:
1. Use this form paragraph to notify applicant that the supplemental reply filed on or after October 21, 2004 is not approved for entry.
2. Do not use this form paragraph if the supplemental reply has been entered. Use the Office Action Summary (PTOL-326) or the Notice of Allowability (PTOL-37), whichever is appropriate, to indicate that the Office action is responsive to the reply filed in compliance with 37 CFR 1.111 (b) and the supplemental reply.
3. Do not use this form paragraph if the supplemental reply was filed within the period during which action is suspended by the Office under 37 CFR 1.103(a) or (c). Such supplemental reply must be entered. If the supplemental reply filed during the suspended period is not in compliance with 37 CFR 1.121, a notice of non-compliant amendment (PTOL-324) should be mailed to the applicant.
4. In bracket 1, provide the date that the Office received the supplemental reply (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8 ).
5. In bracket 2, insert a reason for non-entry as noted in 37 CFR 1.111(a)(2)(i). For example, "The supplemental reply is clearly not limited to placement of the application in condition for allowance."
If a supplemental reply is received in the Office after the mail date of an Office action, and it is not responsive to that Office action, the Office will not mail a new Office action responsive to that supplemental reply. As a courtesy, applicant may be notified that the supplemental reply is nonresponsive to the mailed Office action and that a responsive reply (under 37 CFR 1.111 or 1.113 as the situation may be) to the mailed Office action must be timely filed to avoid abandonment. Also see MPEP § 714.03 for replies not fully responsive and MPEP § 714.05 when the Office action crosses in the mail with a supplemental reply.
714.04 Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty [R-08.2012]
In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the claims should not be allowed. See 37 CFR 1.111 and MPEP § 714.02.
An amendment failing to point out the patentable novelty which the applicant believes the claims present in view of the state of the art disclosed by the references cited or the objections made may be held to be not fully responsive and a time period set to furnish a proper reply if the statutory period has expired or almost expired (MPEP § 714.03). However, if the claims as amended are clearly open to rejection on grounds of record, a final rejection should generally be made.
714.05 Examiner Should Immediately Review [R-11.2013]
Actions by applicant, especially those filed near the end of the period for reply, should be reviewed as soon as possible upon becoming available to the examiner to determine whether they are completely responsive to the preceding Office action so as to prevent abandonment of the application. If found inadequate, and sufficient time remains, applicant should be notified of the deficiencies and warned to complete the reply within the period. See MPEP § 714.03.
All amended applications forwarded to the examiner should be reviewed at once to determine the following:
- (A) If the amendment is properly signed (MPEP § 714.01(a)).
- (B) If the amendment has been filed within the statutory period, set shortened statutory period, or time limit (MPEP § 710 - § 710.05).
- (C) If the amendment is fully responsive (MPEP § 714.03 and § 714.04) and complies with 37 CFR 1.121 (MPEP § 714).
- (D) If the changes made by the amendment warrant transfer (MPEP § 903.08(d)).
- (E) If the application is special (MPEP § 708.01).
- (F) If claims suggested to applicant for interference purposes have been copied. (MPEP Chapter 2300).
- (G) If there is a traversal of a requirement for restriction MPEP § 818.01(a)).
- (H) If applicant has cited references (MPEP § 707.05(b) and § 1302.12).
- (I) If a terminal disclaimer has been filed (MPEP § 804.02, § 804.03, and § 1490).
- (J) If any matter involving security has been added (MPEP § 115).
ACTION CROSSES AMENDMENT
A supplemental action may be necessary when an amendment is filed on or before the mailing date of the regular action but reaches the Technology Center later. The supplemental action should be promptly prepared. It need not reiterate all portions of the previous action that are still applicable but it should specify which portions are to be disregarded, pointing out that the period for reply runs from the mailing of the supplemental action. The action should be headed "Responsive to amendment of (date) and supplemental to the action mailed (date)."
714.06 [Reserved]
714.07 Amendments Not in Permanent Ink [R-11.2013]
37 CFR 1.52(a) requires "permanent dark ink or its equivalent" to be used on papers which will become part of the record. So-called "Easily Erasable" paper having a special coating so that erasures can be made more easily may not provide a "permanent" copy. However, because application papers are now maintained in an Image File Wrapper, the type of paper is unlikely to be an issue so long as the Office is able to scan and reproduce the papers that were filed.
See MPEP § 608.01 for more discussion on acceptable copies.
714.08-714.09 [Reserved]
714.10 Claims Added in Excess of Claims Previously Paid For [R-08.2012]
Applicant is required to pay excess claims fees for each claim that is in excess of 3 in independent form or in excess of 20 (whether dependent or independent). Fees for a proper multiple dependent claim are calculated based on the number of claims to which the multiple dependent claim refers (37 CFR 1.75(c) ) and a separate fee is also required in each application containing a proper multiple dependent claim. See MPEP § 607. When applicant adds a new excess claim that is in excess of the number of claims that were previously paid for after taking into account claims that have been canceled, applicant must pay the required excess claims fees before the examiner considers the new claim. For example, in an application that contains 6 independent claims and 30 total claims for which the excess claims fees were previously paid, when applicant cancels 10 claims, 2 of which are independent, and adds 11 claims, 3 of which are independent, excess claims fees for a 7th independent claim and a 31st claim are required.
714.11 Amendment Filed During Interference Proceedings [R-08.2012]
See MPEP Chapter 2300.
714.12 Amendments and Other Replies After Final Rejection or Action [R-08.2017]
37 C.F.R. 1.116 Amendments and affidavits or other evidence after final action and prior to appeal.
- (a) An amendment after final action must comply with § 1.114 or this section.
- (b) After a final rejection or other final action (§ 1.113 ) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949 ) in an inter partes reexamination filed under § 1.913, but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title):
- (1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;
- (2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or
- (3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
- (c) The admission of, or refusal to admit, any amendment after a final rejection, a final action, an action closing prosecution, or any related proceedings will not operate to relieve the application or reexamination proceeding from its condition as subject to appeal or to save the application from abandonment under § 1.135, or the reexamination prosecution from termination under § 1.550(d) or § 1.957(b) or limitation of further prosecution under § 1.957(c).
- (d)
- (1) Notwithstanding the provisions of paragraph (b) of this section, no amendment other than canceling claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
- (2) Notwithstanding the provisions of paragraph (b) of this section, an amendment made after a final rejection or other final action (§ 1.113 ) in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949 ) in an inter partes reexamination filed under § 1.913 may not cancel claims where such cancellation affects the scope of any other pending claim in the reexamination proceeding except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
- (e) An affidavit or other evidence submitted after a final rejection or other final action (§ 1.113 ) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949 ) in an inter partes reexamination filed under § 1.913 but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.
- (f) Notwithstanding the provisions of paragraph (e) of this section, no affidavit or other evidence can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
- (g) After decision on appeal, amendments, affidavits and other evidence can only be made as provided in §§ 1.198 and 1.981, or to carry into effect a recommendation under § 41.50(c) of this title.
- (1) Notwithstanding the provisions of paragraph (b) of this section, no amendment other than canceling claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
Once a final rejection that is not premature has been entered in an application, applicant or patent owner no longer has any right to unrestricted further prosecution. This does not mean that no further amendment or argument will be considered. Any amendment that will place the application either in condition for allowance or in better form for appeal may be entered. Also, amendments filed after a final rejection, but before or on the date of filing an appeal, complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(b). Amendments filed after the date of filing an appeal may be entered if the amendment complies with 37 CFR 41.33. See MPEP § 1206. Ordinarily, amendments filed after the final action are not entered unless approved by the examiner. See MPEP § 706.07(f), § 714.13 and § 1206.
An affidavit or other evidence filed after a final rejection, but before or on the same date of filing an appeal, may be entered upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e). See 37 CFR 41.33 and MPEP § 1206 for information on affidavit or other evidence filed after appeal.
Applicant's submissions concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art exclusion under pre-AIA 35 U.S.C. 103(c) are entitled to being considered even after a final rejection has been made, because if the exception or exclusion is established, the propriety of the rejection is obviated as a matter of law. If a final rejection of certain claims is obviated by a timely reply based on a proper claim of entitlement to the prior art exception or exclusion, then the Office should acknowledge the reply by modifying the status of the claims. For example, if the only rejection in the final rejection is obviated by a submission demonstrating entitlement to except or exclude prior art in the after-final reply, the Office should indicate that the claims are allowable, or prosecution should be reopened should the claims be considered unpatentable in view of newly applied prior art. Applicants should be aware, however, that the failure to make a proper submission of entitlement to except or exclude prior art following the first Office action may be considered by the Office as conduct that is considered to be a failure to engage in reasonable efforts to conclude prosecution if such prior art is thereafter excepted under 35 U.S.C. 102(b)(2)(C) or excluded under pre-AIA 35 U.S.C. 103(c). See 37 CFR 1.704(c) and the discussion of comment 19 in Changes To Implement Patent Term Adjustment Under Twenty-Year Patent Term; Final Rule, 65 FR 56366, 79 (September 18, 2000).
The prosecution of an application before the examiner should ordinarily be concluded with the final action. However, one personal interview by applicant may be entertained after such final action if circumstances warrant. Thus, only one request by applicant for a personal interview after final should be granted, but in exceptional circumstances, a second personal interview may be initiated by the examiner if in his or her judgment this would materially assist in placing the application in condition for allowance.
Many of the difficulties encountered in the prosecution of patent applications after final rejection may be alleviated if each applicant includes, at the time of filing or no later than the first reply, claims varying from the broadest to which he or she believes he or she is entitled to the most detailed that he or she is willing to accept.
714.13 Amendments and Other Replies After Final Rejection or Action, Procedure Followed [R-08.2017]
I. FINAL REJECTION — TIME FOR REPLY
If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection. This procedure applies only to a first reply to a final rejection. The following language must be included by the examiner in each final rejection:
A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST REPLY IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE THREE-MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 CFR 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR REPLY EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION.
This wording is part of form paragraphs 7.39, 7.40, 7.40.01, 7.40.02.fti, 7.40.02.aia, 7.41, 7.41.03.fti, 7.42.03.fti, and 7.42.09. Form paragraph 7.39 appears in MPEP § 706.07. Form paragraphs 7.40, 7.40.01, 7.40.02.fti, and 7.40.02.aia appear in MPEP § 706.07(a). Form paragraphs 7.41, 7.41.03.fti, and 7.42.09 appear in MPEP § 706.07(b). Form paragraph 7.42.03.fti appears in MPEP § 706.07(g).
For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, any extension fee would then be calculated from the end of the 3-month period. If the examiner, however, does not mail an advisory action until after the end of 3 months, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension fee may be calculated from that date. In the event that a first reply is not filed within 2 months of the mailing date of the final rejection, any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the end of the reply period set in the final rejection.
Failure to file a reply during the shortened statutory period results in abandonment of the application unless the time is extended under the provisions of 37 CFR 1.136.
II. ENTRY NOT A MATTER OF RIGHT
It should be kept in mind that applicant cannot, as a matter of right, amend any finally rejected claims, add new claims after a final rejection (see 37 CFR 1.116 ) or reinstate previously canceled claims.
Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR 1.116(b)(3) is expected in all amendments after final rejection. An affidavit or other evidence filed after a final rejection, but before or on the same date of filing an appeal, may be entered upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e). See 37 CFR 41.33 and MPEP § 1206 for information on affidavit or other evidence filed after appeal. Failure to properly reply under 37 CFR 1.113 to the final rejection results in abandonment. A reply under 37 CFR 1.113 is limited to:
- (A) an amendment complying with 37 CFR 1.116;
- (B) a Notice of Appeal (and appeal fee); or
- (C) a request for continued examination (RCE) filed under 37 CFR 1.114 with a submission (i.e., an amendment that meets the reply requirement of 37 CFR 1.111 ) and the fee set forth in 37 CFR 1.17(e). RCE practice under 37 CFR 1.114 does not apply to utility or plant patent applications filed before June 8, 1995 and design applications.
Applicant's submissions concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art exclusion under pre-AIA 35 U.S.C. 103(c) are entitled to being considered even after a final rejection has been made, because if the exception or exclusion is established, the propriety of the rejection is obviated as a matter of law. If a final rejection of certain claims is obviated by a timely reply based on a proper claim of entitlement to the prior art exception or exclusion, then the Office should acknowledge the reply by modifying the status of the claims. For example, if the only rejection in the final rejection is obviated by a submission demonstrating entitlement to except or exclude prior art in the after-final reply, the Office should indicate that the claims are allowable, or prosecution should be reopened should the claims be considered unpatentable in view of newly applied prior art.
Further examination of the application may be obtained by filing a continued prosecution application (CPA) under 37 CFR 1.53(d), if the application is a design application. See MPEP § 201.06(d). Effective July 14, 2003, CPA practice does not apply to utility and plant applications.
An amendment filed at any time after final rejection, but before an appeal brief is filed, may be entered upon or after filing of an appeal brief provided the total effect of the amendment is to (A) remove issues for appeal, and/or (B) adopt examiner suggestions.
See also MPEP § 1206 and § 1211.
The U.S. Patent and Trademark Office does not recognize "conditional" authorizations to charge an appeal fee if an amendment submitted after a final Office action is not entered. Any "conditional" authorization to charge an appeal fee set forth in 37 CFR 1.17(b) will be treated as an unconditional payment of the fee set forth in 37 CFR 1.17(b).
III. ACTION BY EXAMINER
See also MPEP § 706.07(f).
In the event that a proposed amendment does not place the case in better form for appeal, nor in condition for allowance, applicant should be promptly informed of this fact, whenever possible, within the statutory period. The refusal to enter the proposed amendment should not be arbitrary. The proposed amendment should be given sufficient consideration to determine whether the claims are in condition for allowance and/or whether the issues on appeal are simplified. Ordinarily, the specific deficiencies of the amendment need not be discussed. However, if the proposed amendment raises the issue of new matter, the examiner should identify the subject matter that would constitute new matter. If the proposed amendment presents new issues requiring further consideration and/or search, the examiner should provide an explanation as to the reasons why the proposed amendment raises new issues that would require further consideration and/or search. The reasons for nonentry should be concisely expressed. For example:
- (A) The claims, if amended as proposed, would not avoid any of the rejections set forth in the last Office action, and thus the amendment would not place the case in condition for allowance or in better condition for appeal.
- (B) The claims, if amended as proposed, would raise the issue of new matter.
- (C) The claims as amended present new issues requiring further consideration or search.
- (D) Since the amendment presents additional claims without canceling any finally rejected claims it is not considered as placing the application in better condition for appeal. Ex parte Wirt, 1905 C.D. 247, 117 OG 599 (Comm’r Pat. 1905).
Examiners should indicate the status of each claim of record or proposed in the amendment, and which proposed claims would be entered on the filing of an appeal if filed in a separate paper. Whenever such an amendment is entered for appeal purposes, the examiner must indicate on the advisory action which individual rejection(s) set forth in the action from which the appeal was taken (e.g., the final rejection) would be used to reject the new or amended claim(s).
Applicant should be notified, if certain portions of the amendment would be acceptable as placing some of the claims in better form for appeal or complying with objections or requirements as to form, if a separate paper were filed containing only such amendments. Similarly, if the proposed amendment to some of the claims would render them allowable, applicant should be so informed. This is helpful in assuring the filing of a brief consistent with the claims as amended. A statement that the final rejection stands and that the statutory period runs from the date of the final rejection is also in order.
Advisory Action Before the Filing of an Appeal Brief form PTOL-303 should be used to acknowledge receipt of a reply from applicant after final rejection where such reply is prior to filing of an appeal brief and does not place the application in condition for allowance. This form has been devised to advise applicant of the disposition of the proposed amendments to the claims and of the effect of any argument or affidavit not placing the application in condition for allowance or which could not be made allowable by a telephone call to clear up minor matters.
Any amendment timely filed after a final rejection should be immediately considered to determine whether it places the application in condition for allowance or in better form for appeal. An examiner is expected to turn in a response to an amendment after final rejection within an average of 11 calendar days from the time the amendment is received by the examiner. A reply to an amendment after final rejection should be mailed within 30 days of the date the amendment is received by the Office. In all instances, both before and after final rejection, in which an application is placed in condition for allowance, applicant should be notified promptly of the allowability of the claims by a Notice of Allowability form PTOL-37. If delays in processing the Notice of Allowability are expected, e.g., because an extensive examiner’s amendment must be entered, and the end of a statutory period for reply is near, the examiner should notify applicant by way of an interview that the application has been placed in condition for allowance, and an Examiner Initiated Interview Summary form should be mailed. Prompt notice to applicant is important because it may avoid an unnecessary appeal and act as a safeguard against a holding of abandonment. Every effort should be made to mail the letter before the period for reply expires.
If no appeal has been filed within the period for reply and no amendment has been submitted to make the application allowable or which can be entered in part (see MPEP § 714.20), the application stands abandoned.
It should be noted that under 37 CFR 1.181(f), the filing of a 37 CFR 1.181 petition will not stay the period for reply to an examiner’s action which may be running against an application. See MPEP § 1206 for appeal and post-appeal procedure. For after final rejection practice relative to affidavits or declarations filed under 37 CFR 1.131(a) and 1.132, see MPEP § 715.09 and § 716.
Form paragraph 7.169 may be used to notify applicant in the Advisory Action that the proposed amendment(s) will be entered upon appeal and how the new or amended claim(s) would be rejected.
¶ 7.169 Advisory Action, Proposed Rejection of Claims, Before Appeal Brief
For purposes of appeal, the proposed amendment(s) will be entered and the proposed rejection(s) detailed below will be included in the Examiner’s Answer. To be complete, such rejection(s) must be addressed in any brief on appeal.
Upon entry of the amendment(s) for purposes of appeal:
Claim(s) [1] would be rejected for the reasons set forth in [2] of the final Office action mailed [3].
Examiner Note:
1. In bracket 1, identify all the new or amended claim(s) that would be grouped together in a single rejection.
2. In bracket 2, identify the rejection by referring to either the paragraph number or the statement of the rejection (e.g., the rejection under 35 U.S.C. 103 based upon A in view of B) in the final Office action under which the claims would be rejected on appeal.
3. Repeat this form paragraph for each group of claims subject to the same rejection(s).
4. Use this form paragraph if item 7 of the Advisory Action form, PTOL-303 (Rev. 9-04 or later) has been checked to indicate that the proposed amendment(s) will be entered upon appeal.
IV. HAND DELIVERY OF PAPERS
Hand carried papers for the Technology Centers (TCs) may only be delivered to the Customer Window which is located at:
U.S. Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
Effective December 1, 2003, all official patent application related correspondence for organizations reporting to the Commissioner of Patents (e.g., TCs, the Office of Data Management, and the Office of Petitions) that is hand-carried (or delivered by other delivery services, e.g., FedEx, UPS, etc.) must be delivered to the Customer Window, with a few limited exceptions. See MPEP § 502. Hand-carried amendments and other replies after final rejection (37 CFR 1.116 ) will no longer be accepted in the TCs. Any courier who attempts delivery of such after final correspondence at a TC (or where it is no longer permitted) will be re-directed to the Customer Window. Patent application related compact disks (CDs) and other non-paper submissions that are hand-carried must be delivered to the Customer Window.
V. EXPEDITED PROCEDURE FOR PROCESSING AMENDMENTS AND OTHER REPLIES AFTER FINAL REJECTION (37 CFR 1.116)
In an effort to improve the timeliness of the processing of amendments and other replies under 37 CFR 1.116, and thereby provide better service to the public, an expedited processing procedure has been established which the public may utilize in filing amendments and other replies after final rejection under 37 CFR 1.116.
Amendments and other replies under 37 CFR 1.116 filed via EFS-Web are processed promptly provided the submitter describes the document as an amendment after final rejection. Based on the document description selected by the user, a document code is assigned and a message regarding the document submitted to the USPTO will be forwarded to the appropriate organization for processing, and to the appropriate official for consideration. Accurate document indexing is important to facilitate efficient processing and proper consideration of the document by the USPTO.
In order for an applicant to take advantage of the expedited procedure, an amendment or other reply under 37 CFR 1.116 filed in paper format must be marked as a "Reply under 37 CFR 1.116 — Expedited Procedure - Technology Center (Insert Technology Center Number)" on the upper right portion of the amendment or other reply and the envelope must be clearly marked "Mail Stop AF" in the lower left hand corner. If the reply is mailed to the Office, the envelope should contain only replies under 37 CFR 1.116 and should be mailed to "Mail Stop AF, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia, 22313-1450." Instead of mailing the envelope to "Mail Stop AF" as noted above, the reply may be hand-carried to the Customer Window located at the above address. The outside of the envelope should be marked "Reply Under 37 CFR 1.116 - Expedited Procedure - Technology Center (Insert Technology Center Number)."
Upon receipt by the U.S. Patent and Trademark Office from the U.S. Postal Service of an envelope appropriately marked "Mail Stop AF," the envelope will be specially processed by the Mail Center and forwarded to the Technology Center after being uploaded as a scanned image into the file wrapper. Upon receipt of the reply in the TC it will be promptly processed by a designated technical support staff member and forwarded to the examiner, via the supervisory patent examiner (SPE), for action. The SPE is responsible for ensuring that prompt action on the reply is taken by the examiner. If the examiner to which the application is assigned is not available and will not be available for an extended period, the SPE will ensure that action on the application is promptly taken to assure meeting the USPTO goal described below. Once the examiner has completed his or her consideration of the reply, the examiner’s action will be promptly typed and printed, and mailed by technical support staff or other Office personnel designated to expedite the processing of replies filed under this procedure. The TC supervisory personnel, e.g., the supervisory patent examiner, supervisory applications examiner, and TC Director are responsible for ensuring that actions on replies filed under this procedure are promptly processed and mailed. The U.S. Patent and Trademark Office goal is to mail the examiner’s action on the reply within 1 month from the date on which the amendment or reply is received by the U.S. Patent and Trademark Office.
Applicants are encouraged to utilize this expedited procedure in order to facilitate U.S. Patent and Trademark Office processing of replies under 37 CFR 1.116. If applicants do not utilize the procedure by appropriately marking the envelope and enclosed papers, the benefits expected to be achieved therefrom will not be attained. The procedure cannot be expected to result in achievement of the goal in applications in which the delay results from actions by the applicant, e.g., delayed interviews, applicant’s desire to file a further reply, or a petition by applicant which requires a decision and delays action on the reply. In any application in which a reply under this procedure has been filed and no action by the examiner has been received within the time referred to herein, plus normal mailing time, a telephone call to the SPE of the relevant TC art unit would be appropriate in order to permit the SPE to determine the cause for any delay. If the SPE is unavailable or if no satisfactory reply is received, the TC Director should be contacted.
714.14 Amendments After Allowance of All Claims [R-10.2019]
Under the decision in Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11; 453 OG 213 (Comm’r Pat. 1935), after all claims in an application have been allowed the prosecution of the application on the merits is closed even though there may be outstanding formal objections which preclude fully closing the prosecution.
Amendments touching the merits are treated in a manner similar to amendments after final rejection, though the prosecution may be continued as to the formal matters. See MPEP § 714.12 and § 714.13.
See MPEP § 714.20 for amendments entered in part.
See MPEP § 607 for additional fee requirements.
See MPEP § 714 for non-compliant amendments.
Use form paragraph 7.51 to issue an Ex parte Quayle action.
¶ 7.51 Quayle Action
This application is in condition for allowance except for the following formal matters: [1].
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
A shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136 but in no case can any extension carry the date for reply to this Office action beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
Examiner Note:
Explain the formal matters which must be corrected in bracket 1.
714.15 Amendment Received in Technology Center After Mailing of Notice of Allowance [R-08.2012]
Where an amendment, even though prepared by applicant prior to allowance, does not reach the Office until after the notice of allowance has been mailed, such amendment has the status of one filed under 37 CFR 1.312. Its entry is a matter of grace. For discussion of amendments filed under 37 CFR 1.312, see MPEP § 714.16 to § 714.16(e).
If the amendment is filed in the Office prior to the mailing of the notice of allowance, but is received by the examiner after the mailing of the notice of allowance, it may also not be approved for entry. If the amendment is a supplemental reply filed when action is not suspended, such an amendment will not be approved for entry because supplemental replies are not entered as matter of right. See 37 CFR 1.111(a)(2) and MPEP § 714.03(a). If the amendment is a preliminary amendment, such an amendment may be disapproved under 37 CFR 1.115(b). See MPEP § 714.01(e). If the amendment is approved for entry, the examiner may enter the amendment and provide a supplemental notice of allowance, or withdraw the application from issue and provide an Office action.
The application will not be withdrawn from issue for the entry of an amendment that would reopen the prosecution if the Office action next preceding the notice of allowance closed the application to further amendment, i.e., by indicating the patentability of all of the claims, or by allowing some and finally rejecting the remainder.
After an applicant has been notified that the claims are all allowable, further prosecution of the merits of the application is a matter of grace and not of right. Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11, 453 OG 213 (Comm’r Pat. 1935).
714.16 Amendment After Notice of Allowance, 37 CFR 1.312 [R-10.2019]
37 C.F.R. 1.312 Amendments after allowance.
No amendment may be made as a matter of right in an application after the mailing of the notice of allowance. Any amendment filed pursuant to this section must be filed before or with the payment of the issue fee, and may be entered on the recommendation of the primary examiner, approved by the Director, without withdrawing the application from issue.
The amendment of an application by applicant after allowance falls within the guidelines of 37 CFR 1.312. Further, the amendment of an application broadly encompasses any change in the file record of the application. Accordingly, the following are examples of "amendments" by applicant after allowance which must comply with 37 CFR 1.312:
- (A) an amendment to the specification,
- (B) a change in the drawings,
- (C) an amendment to the claims,
- (D) a change in the inventorship,
- (E) the submission of prior art,
- (F) a request to correct the spelling of an inventor’s name (37 CFR 1.48(f) ),
- (G) a request to change the order of the names of the inventors (37 CFR 1.48(f) ), etc.
The above "amendments" must also comply with the other applicable requirements. For example, an amendment to the specification, drawings, or claims must comply with the requirements of 37 CFR 1.121 in addition to the requirements of 37 CFR 1.312 and a submission of prior art must comply with the requirements of 37 CFR 1.97 and 1.98 in addition to the requirements of 37 CFR 1.312.
Finally, it is pointed out that an amendment under 37 CFR 1.312 must be filed on or before the date the issue fee is paid, except where the amendment is required by the Office of Data Management, see MPEP § 714.16(d), subsection III. An amendment under 37 CFR 1.312 must comply with the provisions of 37 CFR 1.121. If the amendment is non-compliant under 37 CFR 1.121 and the entry of the amendment would have been otherwise recommended, the examiner may enter the amendment and correct the non-compliance (e.g., an incorrect status identifier) using an examiner’s amendment. See MPEP § 714.
The Director has delegated the approval of recommendations under 37 CFR 1.312 to the supervisory patent examiners.
With the exception of a supplemental oath or declaration submitted in a reissue, a supplemental oath or declaration is not treated as an amendment under 37 CFR 1.312. See MPEP § 603.01. A supplemental reissue oath or declaration is treated as an amendment under 37 CFR 1.312 because the correction of the patent which it provides is an amendment of the patent, even though no amendment is physically entered into the specification or claim(s). Thus, for a reissue oath or declaration submitted after allowance to be entered, the reissue applicant must comply with 37 CFR 1.312 in the manner set forth in this section.
After the Notice of Allowance has been mailed, the application is technically no longer under the jurisdiction of the primary examiner. He or she can, however, make examiner’s amendments (see MPEP § 1302.04) and has authority to enter amendments submitted after Notice of Allowance of an application which embody merely the correction of formal matters in the specification or drawing, or formal matters in a claim without changing the scope thereof, or the cancellation of claims from the application, without forwarding to the supervisory patent examiner for approval.
Amendments other than those which merely embody the correction of formal matters without changing the scope of the claims require approval by the supervisory patent examiner. The Technology Center (TC) Director establishes TC policy with respect to the treatment of amendments directed to trivial informalities which seldom affect significantly the vital formal requirements of any patent, namely, (A) that its disclosure be adequately clear, and (B) that any invention present be defined with sufficient clarity to form an adequate basis for an enforceable contract.
Consideration of an amendment under 37 CFR 1.312 cannot be demanded as a matter of right. Prosecution of an application should be conducted before, and thus be complete including editorial revision of the specification and claims at the time of the Notice of Allowance. However, where amendments of the type noted are shown (A) to be needed for proper disclosure or protection of the invention, and (B) to require no substantial amount of additional work on the part of the Office, they may be considered and, if proper, entry may be recommended by the primary examiner.
The requirements of 37 CFR 1.111(c) (MPEP § 714.02) with respect to pointing out the patentable novelty of any claim sought to be added or amended, apply in the case of an amendment under 37 CFR 1.312, as in ordinary amendments. See MPEP §§ 713.04 and 713.10 regarding interviews. As to amendments affecting the disclosure, the scope of any claim, or that add a claim, the remarks accompanying the amendment must fully and clearly state the reasons on which reliance is placed to show:
- (A) why the amendment is needed;
- (B) why the proposed amended or new claims require no additional search or examination;
- (C) why the claims are patentable; and
- (D) why they were not presented earlier.
I. NOT TO BE USED FOR CONTINUED PROSECUTION
37 CFR 1.312 was never intended to provide a way for the continued prosecution of an application after it has been passed for issue. When the recommendation is against entry, a detailed statement of reasons is not necessary in support of such recommendation. The simple statement that the proposed claim is not obviously allowable and briefly the reason why is usually adequate. Where appropriate, any one of the following reasons is considered sufficient:
- (A) an additional search is required;
- (B) more than a cursory review of the record is necessary; or
- (C) the amendment would involve materially added work on the part of the Office, e.g., checking excessive editorial changes in the specification or claims.
Where claims added by amendment under 37 CFR 1.312 are all of the form of dependent claims, some of the usual reasons for nonentry are less likely to apply although questions of new matter, sufficiency of disclosure, or undue multiplicity of claims could arise.
See MPEP §§ 607 and 714.16(c) for additional fee requirements.
II. AMENDMENTS FILED AFTER PAYMENT OF ISSUE FEE
Except where the Office of Data Management has required an amendment, no amendments should be filed after the date the issue fee has been paid. See MPEP § 714.16(d), subsection III for processing an amendment required by the Office of Data Management.
¶ 13.10 Amendment Filed After the Payment of Issue Fee, Not Entered
Applicant’s amendment filed on [1] will not be entered because the amendment was filed after the issue fee was paid. 37 CFR 1.312 no longer permits filing an amendment after the date the issue fee has been paid.
Examiner Note:
1. Use this paragraph with form PTOL-90 or PTO-90C.
2. In bracket 1, insert the date of the amendment.
714.16(a) Amendments Under 37 CFR 1.312, Copied Patent Claims [R-08.2012]
See MPEP Chapter 2300 for the procedure to be followed when an amendment is received after notice of allowance which includes one or more claims copied or substantially copied from a patent.
The entry of the copied patent claims is not a matter of right. See MPEP § 714.19.
See MPEP § 607 and § 714.16(c) for additional fee requirements.
714.16(b) Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 [R-08.2012]
Where an amendment filed with a motion under 37 CFR 41.208(c)(2) applies to an application in issue, the amendment is not entered unless and until the motion has been granted.
714.16(c) Amendments Under 37 CFR 1.312, Additional Claims [R-08.2012]
If the amendment under 37 CFR 1.312 adds claims (total and independent) in excess of the number previously paid for, additional fees are required. The amendment is not considered by the examiner unless accompanied by the full fee required. See MPEP § 607 and 35 U.S.C. 41.
714.16(d) Amendments Under 37 CFR 1.312, Handling [R-10.2019]
I. AMENDMENTS AFFECTING THE DISCLOSURE OF THE SPECIFICATION, ADDING CLAIMS, OR CHANGING THE SCOPE OF ANY CLAIM
Amendments under 37 CFR 1.312 are sent to the Office of Patent Application Processing (OPAP) to be scanned and uploaded into the IFW. Thereafter OPAP messages the Office of Data Management, which reviews the message and forwards the message to the Technology Center (TC) which allowed the application. Once the TC completes the action, the TC will message the Office of Data Management that issue processing can resume. If an amendment under 37 CFR 1.312 has been filed directly with the TC, the paper will be forwarded to OPAP for scanning.
Hand delivered amendments under 37 CFR 1.312 are no longer accepted in the TC. Hand delivered amendments (unless specifically required by the Office of Data Management, see subsection III. below) may only be delivered to the Customer Window located at:
U.S. Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
In the event that the class and subclass in which the application is classified has been transferred to another TC after the application was allowed, the proposed amendment, file and drawing (if any) are transmitted directly to said other TC and the Publishing Division notified. If the examiner who allowed the application is still employed in the U.S. Patent and Trademark Office but not in said other TC, he or she may be consulted about the propriety of the proposed amendment and given credit for any time spent in giving it consideration.
The amendment is PROMPTLY considered by the examiner who indicates whether or not its entry is recommended by annotating the amendment with "OK to Enter" if the entire amendment is recommended for entry, with "Enter In Part" if only part of the amendment is recommended for entry, and with "Do Not Enter" if none of the amendment is recommended for entry.
In addition, the amendment must comply with the provisions of 37 CFR 1.121. See MPEP § 714.
If the amendment is favorably considered, it is entered and a Response to Rule 312 Communication (PTO-271) is prepared. The primary examiner indicates his or her recommendation by stamping and signing his or her name on the PTO-271. Form paragraph 7.85 may also be used to indicate entry.
¶ 7.85 Amendment Under 37 CFR 1.312 Entered
The amendment filed on [1] under 37 CFR 1.312 has been entered.
Examiner Note:
Use this form paragraph both for amendments under 37 CFR 1.312 that do not affect the scope of the claims (may be signed by primary examiner) and for amendments being entered under 37 CFR 1.312 which do affect the scope of the claims (requires signature of supervisory patent examiner). See MPEP § 714.16.
If the examiner’s recommendation is completely adverse, a Response to Rule 312 Communication form PTO-271 is prepared and signed by the primary examiner.
Form paragraph 7.87 may also be used to indicate nonentry.
¶ 7.87 Amendment Under 37 CFR 1.312 Not Entered
The proposed amendment filed on [1] under 37 CFR 1.312 has not been entered. [2]
Examiner Note:
The reasons for non-entry should be specified in bracket 2, for example:
--The amendment changes the scope of the claims.--
In either case, whether the amendment is entered or not entered, the file, drawing, and unmailed notices are forwarded to the supervisory patent examiner for consideration, approval, and mailing.
For entry-in-part, see MPEP § 714.16(e).
The filling out of the appropriate form by the technical support staff does not signify that the amendment will be entered; although the amendment paper is placed in the application file, it is not officially entered unless and until approved by the supervisory patent examiner.
See MPEP §§ 607 and 714.16(c) for additional fee requirements.
II. AMENDMENTS WHICH EMBODY MERELY THE CORRECTION OF FORMAL MATTERS IN THE SPECIFICATION, FORMAL CHANGES IN A CLAIM WITHOUT CHANGING THE SCOPE THEREOF, OR THE CANCELLATION OF CLAIMS
The examiner indicates approval of amendments concerning merely formal matters by writing "Enter" thereon with the stamper tool in Adobe Acrobat. Such amendments do not require submission to the supervisory patent examiner prior to entry. See MPEP § 714.16. The Response to Rule 312 Communication form PTO-271 is date stamped and mailed by the TC. If such amendments are disapproved either in whole or in part, they require the signature of the supervisory patent examiner.
III. AMENDMENTS REQUIRED BY THE OFFICE OF DATA MANAGEMENT
In preparation of a patent for issuance as a patent grant, if the Office of Data Management discovers an error in the text, or drawings of a patent application, including any missing text, or an inconsistency between the drawings and the application papers, the Office of Data Management may require an appropriate amendment to the specification or drawings. 37 CFR 1.312, however, does not permit an amendment after the payment of the issue fee without withdrawal of the application from issue. In order to be able to accept such an amendment as may be required without having to withdraw an application from issue, the Office of Data Management has been delegated the authority to waive the requirement of 37 CFR 1.312 and accept an amendment filed after the payment of the issue fee. Furthermore, these amendments required by the Office of Data Management may be hand delivered to the Office of Data Management located at:
Office of Data Management
Randolph Square Building 9th Floor
2800 South Randolph Street
Arlington, VA 22206
714.16(e) Amendments Under 37 CFR 1.312, Entry in Part [R-11.2013]
The general rule that an amendment cannot be entered in part and refused in part should not be relaxed, but when, under 37 CFR 1.312, an amendment, for example, is proposed containing a plurality of claims or amendments to claims, some of which may be entered and some not, the acceptable claims or amendments should be entered in the application. If necessary, the claims should be renumbered to run consecutively with the claims already in the case. The examiner should annotate the amendments by using the Strike-Out Line tool to cross out any refused claims or amendments.
The examiner should then submit a Response to Rule 312 Communication form PTO-271 recommending the entry of the acceptable portion of the amendment and the nonentry of the remaining portion together with his or her reasons therefor. The claims entered should be indicated by number in this response. Applicant may also be notified by using form paragraph 7.86.
¶ 7.86 Amendment Under 37 CFR 1. 312 Entered in Part
The amendment filed on [1] under 37 CFR 1.312 has been entered-in-part. [2]
Examiner Note:
When an amendment under 37 CFR 1.312 is proposed containing plural changes, some of which may be acceptable and some not, the acceptable changes should be entered. An indication of which changes have and have not been entered with appropriate explanation should follow in bracket 2.
Handling is similar to complete entry of a 37 CFR 1.312 amendment.
Entry in part is not recommended unless the full additional fee required, if any, accompanies the amendment. See MPEP § 607 and § 714.16(c).
714.17 Amendment Filed After the Period for Reply Has Expired [R-08.2012]
When an application is not prosecuted within the period set for reply and thereafter an amendment is filed without a petition for extension of time and fee pursuant to 37 CFR 1.136(a), such amendment shall be placed in the file of the application, but not formally entered. The technical support staff shall immediately notify the applicant, by telephone and letter, that the amendment was not filed within the time period and therefore cannot be entered and that the application is abandoned unless a petition for extension of time and the appropriate fee are timely filed. See MPEP § 711.02.
See MPEP § 710.02(e) for a discussion of the requirements of 37 CFR 1.136(a).
714.18 Entry of Amendments [R-11.2013]
All amendments received in the technical support staff sections are processed and distributed to the examiners.
Every mail delivery should be carefully screened so that all amendments replying to a final action in which a time period is running against the applicant are promptly processed (e.g., within the next 24 hours).
The purpose of this procedure is to ensure uniform and prompt treatment by the examiners of all applications where the applicant is awaiting a reply to a proposed amendment after final action. In cases of this type, the applicant should receive an Office communication in sufficient time to adequately consider his or her next action if the application is not allowed. Consequently, technical support staff handling will continue to be special when these applications are returned by the examiners to the technical support staff.
Evaluation of the amendment after final rejection for compliance with 37 CFR 1.121 should be left to the examiner, and not treated by the technical support staff before forwarding the amendment to the examiner. If the examiner determines that the proposed amendment is not in compliance with 37 CFR 1.121, the examiner should notify applicant of this fact and attach a Notice of Non-Compliant Amendment to the advisory action. See MPEP § 714.
Amendments are entered as papers into the IFW. When several amendments are made in an application on the same day no particular order as to the hour of the receipt or the mailing of the amendments can be assumed, but consideration of the application must be given as far as possible as though all the papers filed were a composite single paper.
After entry of the amendment the application is "up for action." It is forwarded to the examiner, and he or she is responsible for its proper disposal. The examiner should immediately inspect the amendment as set forth in MPEP § 714.05. After inspection, if no immediate or special action is required, the application awaits examination in regular order.
See MPEP § 714 for the treatment of amendments that are not in compliance with 37 CFR 1.121.
714.19 List of Amendments, Entry Denied [R-10.2019]
The following types of amendments are ordinarily denied entry:
- (A) An amendment presenting an unpatentable claim, or a claim requiring a new search or otherwise raising a new issue in an application whose prosecution before the primary examiner has been closed, as where
- (1) All claims have been allowed,
- (2) All claims have been finally rejected (for exceptions see MPEP § 714.12, § 714.13, and § 714.20, item (D)),
- (3) Some claims have been allowed and the remainder finally rejected. See MPEP § 714.12 to § 714.14.
- (B) Substitute specification that does not comply with 37 CFR 1.125. See MPEP § 608.01(q) and § 714.20.
- (C) A patent claim suggested by the examiner and not presented within the time limit set or an extension thereof, unless entry is authorized by the Director. See MPEP Chapter 2300.
- (D) While copied patent claims are generally admitted even though the application is under final rejection or on appeal, under certain conditions, the claims may be refused entry. See MPEP Chapter 2300.
- (E) An unsigned or improperly signed amendment or one signed by a suspended or excluded attorney or agent.
- (F) An amendment filed in the U.S. Patent and Trademark Office after the expiration of the statutory period or set time period for reply and any extension thereof. See MPEP § 714.17.
- (G) An amendment so worded that it cannot be entered with certain accuracy. See MPEP § 714, subsection II.G.
- (H) An amendment canceling all of the claims and presenting no substitute claim or claims. See 37 CFR 1.115(b)(1), MPEP § 711.01 and § 714.01(e).
- (I) An amendment after a notice of allowance has been mailed in an application, with certain limited exceptions. See MPEP § 714.16.
- (J) Amendments to the drawing held by the examiner to contain new matter are not entered until the question of new matter is settled. This practice of nonentry because of alleged new matter, however, does not apply in the case of amendments to the specification and claims. See MPEP § 608.04 et seq.
- (K) An amendatory paper containing objectionable remarks that, in the opinion of the examiner, brings it within the condemnation of 37 CFR 1.3, will be submitted to the Deputy Commissioner for Patent Examination Policy. See MPEP § 714.25 and MPEP § 1002.02(b). If the Deputy Commissioner determines that the remarks are in violation of 37 CFR 1.3, he or she will notify the applicant of the non-entry of the paper.
- (L) Amendments that cannot be scanned or clearly reproduced. See MPEP § 714.07.
- (M) An amendment presenting claims (total and independent) in excess of the number previously paid for and not accompanied by the full fee for the claims or an authorization to charge the fee to a deposit account or credit card. See MPEP § 509 and § 607.
- (N) An amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention should not be entered. Such an amendment is nonresponsive. Applicant should be notified as directed in MPEP § 714.03 and § 714.05. See MPEP § 821.03.
- (O) An amendment including changes to the specification/claims which is not in compliance with 37 CFR 1.121, e.g., one which does not include replacement paragraphs or claim listings. See MPEP § 714.
- (P) A preliminary amendment that unduly interferes with the preparation of a first Office action. Factors to be considered in denying entry of the preliminary amendment are set forth in 37 CFR 1.115(b). See MPEP § 714.01(e).
- (Q) A supplemental reply is not entered as a matter of right unless it is filed during a suspension period under 37 CFR 1.103(a) or (c). See 37 CFR 1.111(a)(2) and MPEP § 714.03(a).
While amendments falling within any of the foregoing categories should not be entered by the examiner at the time of filing, a subsequent showing by applicant may lead to entry of the amendment.
714.20 List of Amendments Entered in Part [R-11.2013]
To avoid confusion of the record the general rule prevails that an amendment should not be entered in part. At times, the strict observance of its letter may sometimes work more harm than would result from its infraction, especially if the amendment in question is received at or near the end of the period for reply. Thus:
- (A) An "amendment" presenting an unacceptable substitute specification along with amendatory matter, as amendments to claims or new claims, should be entered in part, rather than refused entry in toto. The substitute specification should be denied entry and so marked, while the rest of the paper should be entered. The application as thus amended is acted on when reached in its turn, the applicant being advised that the substitute specification has not been entered.
- See 37 CFR 1.125 and MPEP § 608.01(q) for information regarding the submission of a substitute specification.
- Under current practice, substitute specifications may be voluntarily filed by the applicant if he or she desires. A proper substitute specification will normally be accepted by the Office even if it has not been required by the examiner. However, entry of a substitute specification filed after the notice of allowance has been mailed (37 CFR 1.312 ) is not a matter of right.
- (B) An amendment under 37 CFR 1.312, which in part is approved and in other part disapproved, is entered only as to the approved part. See MPEP § 714.16(e).
- (C) In an application in which prosecution on the merits is closed, i.e., after the issuance of an Ex Parte Quayle action, where an amendment is presented curing the noted formal defect and adding one or more claims some or all of which are in the opinion of the examiner not patentable, or will require a further search, the amendment in such a case will be entered only as to the formal matter. Applicant has no right to have new claims considered or entered at this point in the prosecution.
- (D) In an amendment accompanying a motion granted only in part, the amendment is entered only to the extent that the motion was granted.
NOTE. The examiner writes "Enter" with the Stamper tool in Adobe Acrobat in the left margin opposite the enterable portions.
714.21 Amendments Inadvertently Entered, No Legal Effect [R-11.2013]
If the technical support staff inadvertently enters an amendment when it should not have been entered, such entry is of no legal effect, and the same action is taken as if the changes had not been actually made, inasmuch as they have not been legally made. Unless such unauthorized entry is deleted, suitable notation should be made on the margin of the amendatory paper, as "Not Officially Entered" with the typewriter tool in Adobe Acrobat.
If an amendatory paper is to be retained in the file, even though not entered, it should be given a paper number and listed on the file wrapper with the notation "Not Entered." See 37 CFR 1.3 and MPEP § 714.25 for an example of a paper which may be denied entry.
714.22-714.24 [Reserved]
714.25 Discourtesy of Applicant or Attorney [R-11.2013]
37 C.F.R. 1.3 Business to be conducted with decorum and courtesy.
Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers.
All papers received in the U.S. Patent and Trademark Office should be briefly reviewed to determine whether any discourteous remarks appear therein.
If the attorney or agent is discourteous in the remarks or arguments in his or her amendment or other paper submitted for entry in an application file, either the discourtesy should be entirely ignored or the paper should be submitted to the Deputy Commissioner for Patent Examination Policy for review. See MPEP § 1002.02(b). If the Deputy Commissioner determines that the remarks are in violation of 37 CFR 1.3, the Deputy Commissioner will send a notice of non-entry of the paper to the applicant. At its discretion, the Office may also close the non-entered paper in the IFW of the application or remove the paper from the IFW.
715 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) [R-10.2019]
[Editor Note: This MPEP section and the provisions of 37 CFR 1.131(a) are not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
37 C.F.R. 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.
- (a) When any claim of an application or a patent under reexamination is rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party qualified under § 1.42 or § 1.46, may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a U.S. patent, U.S. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or the date that it is effective as a reference under 35 U.S.C. 102(e) as in effect on March 15, 2013. Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Prior invention may not be established under this section if either:
- (1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application naming another inventor which claims interfering subject matter as defined in § 41.203(a) of this chapter, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this chapter; or
- (2) The rejection is based upon a statutory bar.
- (b) The showing of facts for an oath or declaration under paragraph (a) of this section shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained.
- (c) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
- (1) A terminal disclaimer in accordance with § 1.321(c); and
- (2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
- (d) The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
- (1) A claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013; or
- (2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013.
- (e) In an application for patent to which the provisions of § 1.130 apply, and to any patent issuing thereon, the provisions of this section are applicable only with respect to a rejection under 35 U.S.C. 102(g) as in effect on March 15, 2013.
Under 37 CFR 1.131(a) which provides for the establishment of a date of completion of the invention in a NAFTA or WTO member country, as well as in the United States, an applicant or patent owner can establish a date of completion in a NAFTA member country on or after December 8, 1993, the effective date of section 331 of Public Law 103-182, the North American Free Trade Agreement Act, and can establish a date of completion in a WTO member country other than a NAFTA member country on or after January 1, 1996, the effective date of section 531 of Public Law 103-465, the Uruguay Round Agreements Act (URAA). Acts occurring prior to the effective dates of NAFTA or URAA may be relied upon to show completion of the invention; however, a date of completion of the invention may not be established under 37 CFR 1.131(a) before December 8, 1993, in a NAFTA country or before January 1, 1996, in a WTO country other than a NAFTA country, in applications subject to pre-AIA 35 U.S.C. 104.
If a country joined the WTO after January 1, 1996, the effective date for proving inventive activity in that country for the purpose of pre-AIA 35 U.S.C. 104 and 37 CFR 1.131(a) is the date the country becomes a member of the WTO. See MPEP § 213.01 for a list that includes WTO member countries.
Any printed publication or activity dated prior to an applicant’s or patent owner’s effective filing date, or any domestic patent of prior filing date, which is in its disclosure pertinent to the claimed invention, is available for use by the examiner as a reference in the rejection of the claims of the application or patent under reexamination. In addition, patent application publications and certain international application publications having an effective prior art date prior to the application being examined may be used in a rejection of the claims. See MPEP §§ 2136 - 2136.03.
Such a rejection may be overcome, in certain instances noted below, by filing of an affidavit or declaration under 37 CFR 1.131(a), known as "swearing behind" the reference.
It should be kept in mind that it is the rejection that is withdrawn and not the reference.
I. SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE USED
Affidavits or declarations under 37 CFR 1.131 may be used to overcome rejections in applications subject to pre-AIA 35 U.S.C. 102, and to overcome rejections under pre-AIA 35 U.S.C. 102(g) in applications subject to pre-AIA 35 U.S.C. 102(g) and current 35 U.S.C. 102, for example:
- (A) To antedate a reference or activity that qualifies as prior art under pre-AIA 35 U.S.C. 102(a) and not under pre-AIA 35 U.S.C. 102(b), e.g., where the prior art date under pre-AIA 35 U.S.C. 102(a) of the patent, the publication or activity used to reject the claim(s) is less than 1 year prior to applicant’s or patent owner’s effective filing date. If the prior art reference under pre-AIA 35 U.S.C. 102(a) is a U.S. patent or U.S. patent application publication, the reference may not be antedated if it claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05 for a discussion of "interfering subject matter."
- (B) To antedate a reference that qualifies as prior art under pre-AIA 35 U.S.C. 102(e), where the reference has a prior art date under pre-AIA 35 U.S.C. 102(e) prior to applicant’s effective filing date, and shows but does not claim interfering subject matter. See MPEP § 715.05 for a discussion of "interfering subject matter." See MPEP §§ 2136 - 2136.03 for an explanation of what references qualify as prior art under pre-AIA 35 U.S.C. 102(e).
- (C) During examination, to antedate an activity that qualifies as prior art under pre-AIA 35 U.S.C. 102(g) and not under pre-AIA 35 U.S.C. 102(b), e.g., where the prior art date under pre-AIA 35 U.S.C. 102(g) of the activity used to reject the claim(s) is less than 1 year prior to applicant’s or patent owner’s effective filing date. If the evidence of the activity under pre-AIA 35 U.S.C. 102(g) is a U.S. patent or U.S. patent application publication, the evidence may not be antedated if it claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05 for a discussion of "interfering subject matter" .
II. SITUATIONS WHERE 37 CFR 1.131(a) AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE
An affidavit or declaration under 37 CFR 1.131(a) is not appropriate in the following situations:
- (A) Where the application is subject to current 35 U.S.C. 102 and the affidavit or declaration is not directed to evidence used in a rejection based on pre-AIA 35 U.S.C. 102(g).
- (B) Where the reference publication date is more than 1 year prior to applicant’s or patent owner’s effective filing date. Such a reference is a "statutory bar" under pre-AIA 35 U.S.C. 102(b) as referenced in 37 CFR 1.131(a)(2). A reference that only qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (e) is not a "statutory bar."
- (C) Where the reference U.S. patent or U.S. patent application publication claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05 for a discussion of "interfering subject matter" and MPEP Chapter 2300 . Where the reference patent and the application or patent under reexamination are commonly owned, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent are not identical but are not patentably distinct, a terminal disclaimer and an affidavit or declaration under 37 CFR 1.131(c) may be used to overcome a rejection under 35 U.S.C. 103. See MPEP § 718.
- (D) Where the reference is a foreign patent for the same invention to applicant or patent owner or his or her legal representatives or assigns issued prior to the filing date of the domestic application or patent on an application filed more than 12 months prior to the filing date of the domestic application. See pre-AIA 35 U.S.C. 102(d).
- (E) Where the effective filing date of applicant’s or patent owner’s parent application or an International Convention proved filing date is prior to the effective date of the reference, an affidavit or declaration under 37 CFR 1.131(a) is unnecessary because the reference should not have been used. See MPEP §§ 211 - 216.
- (F) Where the reference is a prior U.S. patent to the same entity, claiming the same invention. The question involved is one of "double patenting."
- (G) Where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art. In this case, that subject matter may be used as a basis for rejecting his or her claims and may not be overcome by an affidavit or declaration under 37 CFR 1.131. In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA 1964); In re Lopresti, 333 F.2d 932, 142 USPQ 177 (CCPA 1964).
- (H) Where the subject matter relied upon is prior art under pre-AIA 35 U.S.C. 102(f).
- (I) Where the subject matter corresponding to a lost count in an interference is either prior art under pre-AIA 35 U.S.C. 102(g) or barred to applicant by the doctrine of interference estoppel. In re Bandel, 348 F.2d 563, 146 USPQ 389 (CCPA 1965); In re Kroekel, 803 F.2d 705, 231 USPQ 640 (Fed. Cir. 1986). See also In re Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992) (Under the principles of res judicata and collateral estoppel, applicant was not entitled to claims that were patentably indistinguishable from the claim lost in interference even though the subject matter of the lost count was not available for use in an obviousness rejection under 35 U.S.C. 103 ). But see In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) (A losing party to an interference, on showing that the invention now claimed is not "substantially the same" as that of the lost count, may employ the procedures of 37 CFR 1.131(a) to antedate the filing date of an interfering application). On the matter of when a "lost count" in an interference constitutes prior art under pre-AIA 35 U.S.C. 102(g), see In re McKellin, 529 F.2d 1342, 188 USPQ 428 (CCPA 1976) (A count is not prior art under pre-AIA 35 U.S.C. 102(g) as to the loser of an interference where the count was lost based on the winner’s foreign priority date). Similarly, where one party in an interference wins a count by establishing a date of invention in a NAFTA or WTO member country (see pre-AIA 35 U.S.C. 104 ), the subject matter of that count is unpatentable to the other party by the doctrine of interference estoppel, even though it is not available as statutory prior art under pre-AIA 35 U.S.C. 102(g). See MPEP §§ 2138.01 and 2138.02.
III. REFERENCE DATE TO BE OVERCOME
The date to be overcome under 37 CFR 1.131(a) is the effective date of the reference (i.e., the date on which the reference is available as prior art).
A. U.S. Patents, U.S. Patent Application Publications, and International Application Publications
See MPEP §§ 2136 - 2136.03 for a detailed discussion of the effective date of a U.S. patent, U.S. patent application publication, or WIPO publication of an international application as a reference under pre-AIA 35 U.S.C. 102(e).
The effective date of a domestic patent when used as a reference in a rejection under pre-AIA 35 U.S.C. 102(e) is not the foreign filing date to which the application for patent may have been entitled under 35 U.S.C. 119(a) during examination. In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966). Therefore, the date to be overcome under 37 CFR 1.131(a) is the effective U.S. filing date, not the foreign priority date. When a U.S. patent or U.S. patent application publication reference is entitled to claim the benefit of an earlier filed application, its effective filing date is determined under pre-AIA 35 U.S.C. 102(e). See MPEP §§ 2136 - 2136.03.
B. Foreign Patents
See MPEP §§ 2126 through 2127 regarding date of availability of foreign patents as prior art.
C. Printed Publications
A printed publication, including a published foreign patent application, is effective as of its publication date, not its date of receipt by the publisher. For additional information regarding effective dates of printed publications, see MPEP §§ 2128 - 2128.02.
D. Activities
An applicant may make an admission, or submit evidence of use of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was used or known by others in this country. See MPEP §§ 2120.02 and 2133.03. The effective date of the activity used to reject the claim(s) is the date the activity was first known to have occurred.
FORM PARAGRAPHS
Form paragraphs 7.57.fti - 7.64.fti may be used to respond to 37 CFR 1.131(a) affidavits.
¶ 7.57.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective- Heading
The [1] filed on [2] under 37 CFR 1.131(a) has been considered but is ineffective to overcome the [3] reference.
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. This form paragraph must be followed by one or more of form paragraphs 7.58.fti to 7.63.fti or a paragraph setting forth proper basis for the insufficiency, such as failure to establish acts performed in this country, or that the scope of the declaration or affidavit is not commensurate with the scope of the claim(s).
¶ 7.58.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Claiming Same Invention
The [1] reference is a U.S. patent or U.S. patent application publication of a pending or patented application that claims the rejected invention. An affidavit or declaration is inappropriate under 37 CFR 1.131(a) when the reference is claiming interfering subject matter as defined in 37 CFR 41.203(a), see MPEP Chapter 2300. If the reference and this application are not commonly owned, the reference can only be overcome by establishing priority of invention through interference proceedings. See MPEP Chapter 2300 for information on initiating interference proceedings. If the reference and this application are commonly owned, the reference may be disqualified as prior art by an affidavit or declaration under 37 CFR 1.131(c). See MPEP § 718.
Examiner Note:
1. If used to respond to the submission of an affidavit under 37 CFR 1.131(a), this paragraph must be preceded by paragraph 7.57.fti.
2. This form paragraph may be used without form paragraph 7.57.fti when an affidavit has not yet been filed, and the examiner desires to notify applicant that the submission of an affidavit under 37 CFR 1.131(a) would be inappropriate.
¶ 7.59.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Reduction to Practice Before Reference Date
The evidence submitted is insufficient to establish a reduction to practice of the invention in this country or a NAFTA or WTO member country prior to the effective date of the [1] reference. [2]
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. An explanation of the lack of showing of the alleged reduction to practice must be provided in bracket 2.
¶ 7.60.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Reference Is a Statutory Bar
The [1] reference is a statutory bar under pre-AIA 35 U.S.C. 102(b) and thus cannot be overcome by an affidavit or declaration under 37 CFR 1.131(a).
Examiner Note:
This form paragraph must be preceded by form paragraph 7.57.fti.
¶ 7.61.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Conception
The evidence submitted is insufficient to establish a conception of the invention prior to the effective date of the [1] reference. While conception is the mental part of the inventive act, it must be capable of proof, such as by demonstrative evidence or by a complete disclosure to another. Conception is more than a vague idea of how to solve a problem. The requisite means themselves and their interaction must also be comprehended. See Mergenthaler v. Scudder, 1897 C.D. 724, 81 OG 1417 (D.C. Cir. 1897). [2]
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. An explanation of the deficiency in the showing of conception must be presented in bracket 2.
3. If the affidavit additionally fails to establish either diligence or a subsequent reduction to practice, this form paragraph should be followed by form paragraph 7.62.fti and/or 7.63.fti. If either diligence or a reduction to practice is established, a statement to that effect should follow this paragraph.
¶ 7.62.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Diligence Lacking
The evidence submitted is insufficient to establish diligence from a date prior to the date of reduction to practice of the [1] reference to either a constructive reduction to practice or an actual reduction to practice. [2]
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. If the affidavit additionally fails to establish conception, this paragraph must also be preceded by form paragraph 7.61.fti. If the affidavit establishes conception, a statement to that effect should be added to this paragraph.
3. If the affidavit additionally fails to establish an alleged reduction to practice prior to the application filing date, this paragraph must be followed by form paragraph 7.63.fti. If such an alleged reduction to practice is established, a statement to that effect should be added to this paragraph.
4. An explanation of the reasons for a holding of non-diligence must be provided in bracket 2.
5. See MPEP § 715.07(a) which explains that diligence is not required after reduction to practice.
¶ 7.63.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Actual Reduction to Practice
The evidence submitted is insufficient to establish applicant’s alleged actual reduction to practice of the invention in this country or a NAFTA or WTO member country after the effective date of the [1] reference. [2].
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.57.fti.
2. If the alleged reduction to practice is prior to the effective date of the reference, do not use this paragraph. See form paragraph 7.59.fti.
3. If the affidavit additionally fails to establish either conception or diligence, form paragraphs 7.61.fti and/or 7.62.fti should precede this paragraph. If either conception or diligence is established, a statement to that effect should be included after this paragraph.
4. An explanation of the lack of showing of the alleged reduction to practice must be given in bracket 2.
¶ 7.64.fti Affidavit or Declaration Under 37 CFR 1.131(a): Effective To Overcome Reference
The [1] filed on [2] under 37 CFR 1.31(a) is sufficient to overcome the [3] reference.
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. In bracket 2, insert the filing date of the affidavit or declaration.
3. In bracket 3, insert the name of the reference.
715.01 37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits [R-08.2017]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
The purpose of a 37 CFR 1.131(a) affidavit or declaration is to overcome a prior art rejection under pre-AIA 35 U.S.C. 102 or 103 by proving invention of the claimed subject matter by the inventor or at least one joint inventor prior to the effective date of the reference or activity relied upon in the rejection.
In some situations, an applicant may, alternatively, be able to overcome prior art rejections relying on references or activities which are available as prior art under pre-AIA 35 U.S.C. 102(a) or references which are available as prior art under pre-AIA 35 U.S.C. 102(e) by proving that the subject matter relied upon in the reference or activity was the inventor’s or at least one joint inventor’s own invention.
Similarly, where the reference relied upon in a 35 U.S.C. 103 rejection qualifies as prior art only under pre-AIA 35 U.S.C. 102(f) or (g), or, in an application filed on or after November 29, 1999, under pre-AIA 35 U.S.C. 102(e), applicant may be able to overcome this rejection by proving that the subject matter relied upon and the claimed invention were commonly owned or subject to common assignment at the time the later invention was made. See MPEP §§ 2146 through 2146.03.
715.01(a) Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor [R-10.2019]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
When subject matter disclosed in a patent or patent application publication (reference) naming an inventive entity including inventor S and another joint inventor is claimed in a later application naming inventor S without the joint inventor, the reference may be properly applied under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132. An unequivocal declaration under 37 CFR 1.132 by S that he/she conceived or invented the subject matter that was disclosed but not claimed in the patent or application publication and relied on in the rejection has been sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982))(declaration corroborated by attached drawing). However, an affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship by an inventor who has an interest at stake and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor's own work. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017) (The court found the declaration submitted by inventor Campbell more than twenty years after the invention insufficient to establish that he and Mr. Guth (deceased) were the inventors of the subject matter disclosed in a patent naming Campbell, Guth, Danziger, and Padron as inventors because "[n]othing in the declaration itself, or in addition to the declaration, provides any context, explanation, or evidence to lend credence to the inventor's bare assertion."). Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination, a declaration under 37 CFR 1.132 must also explain the presence of the additional inventor in the reference (e.g., the disclosure in claim 1 of the reference is relied upon to reject the claims; the affidavit or declaration explains that S is the sole inventor of claim 1, and the additional inventor and S are joint inventors of claim 2 of the reference). Testimony or disclaimer from the other inventor(s) named in the reference is usually not required but, if submitted, should be considered by the examiner.
Note 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 a different inventive entity which claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05. See MPEP § 716.10 for a discussion of the use of 37 CFR 1.132 affidavits or declarations to overcome rejections by establishing that the subject matter relied on in the patent or application publication was the invention of the inventor or at least one inventor named in the application under examination.
For applications subject to current 35 U.S.C. 102, see MPEP §§ 717 and 2155.01.
Although affidavits or declarations submitted for the purpose of establishing that the reference discloses inventor’s or at least one joint inventor’s invention are properly filed under 37 CFR 1.132, rather than 37 CFR 1.131(a), such affidavits submitted improperly under 37 CFR 1.131(a) will be considered as though they were filed under 37 CFR 1.132 to traverse a ground of rejection. In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969).
715.01(b) Reference and Application Have Common Assignee [R-10.2019]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
The mere fact that the reference patent or application publication which shows but does not claim certain subject matter and the application which claims it are owned by the same assignee does not avoid the necessity of filing an affidavit or declaration under 37 CFR 1.131(a), in the absence of a showing under 37 CFR 1.132 that the patentee derived (in the context of pre-AIA law) the subject matter relied on from the applicant (MPEP § 716.10). The common assignee does not obtain any rights in this regard by virtue of common ownership which he or she would not have in the absence of common ownership. In re Frilette, 412 F.2d 269, 162 USPQ 163 (CCPA 1969); Pierce v. Watson, 275 F.2d 890, 124 USPQ 356 (D.C. Cir. 1960); In re Beck, 155 F.2d 398, 69 USPQ 520 (CCPA 1946). Where, however, a rejection is applied under pre-AIA 35 U.S.C. 102(f) /103 or pre-AIA 35 U.S.C. 102(g) /103, or, in an application filed on or after November 29, 1999, under pre-AIA 35 U.S.C. 102(e) /103 using the reference, a showing that the invention was commonly owned, or subject to an obligation of assignment to the same person, at the time the later invention was made would preclude such a rejection or be sufficient to overcome such a rejection. See MPEP §§ 2146.01 - MPEP § 2146.02. For applications subject to current 35 U.S.C. 102, see MPEP § 2154.02(c).
715.01(c) Reference Is Publication of Applicant’s Own Invention [R-10.2019]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 prior art based on a publication may be overcome by a showing that it was published either by the inventor, at least one joint inventor, or on behalf of the inventor or at least one joint inventor. Because such a showing is not made to show a date of invention under 37 CFR 1.131(a), the limitation in pre-AIA 35 U.S.C. 104 and in 37 CFR 1.131(a) that only acts which occurred in this country or in a NAFTA or WTO member country may be relied on to establish a date of invention is not applicable. See MPEP § 716.10 regarding 37 CFR 1.132 affidavits submitted to show that the reference is a publication of the inventor’s or a joint inventor’s own invention to overcome a rejection based on pre-AIA 35 U.S.C. 102 or 103. For applications subject to current 35 U.S.C. 102, see MPEP §§ 2153 and 2154.
I. CO-AUTHORSHIP
Where the inventor or at least one joint inventor is a co-author of a publication cited against an application, a rejection of the application under pre-AIA 35 U.S.C. 102(a) or (e) based on the publication may be overcome by filing an affidavit or declaration of the inventor or at least one joint inventor under 37 CFR 1.131(a). Alternatively, the rejection may be overcome by filing a specific affidavit or declaration of the inventor or at least one joint inventor under 37 CFR 1.132 establishing that the publication is describing the inventor’s or inventors’ own work. An uncorroborated affidavit or declaration by a single inventor indicating the inventor to be the sole inventor and the other co-authors to have been merely working under his or her direction has been sufficient to remove the publication as a reference under pre-AIA 35 U.S.C. 102(a). In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). However, an affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship by an inventor who has an interest at stake and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017) (The court found the declaration submitted by inventor Campbell more than twenty years after the invention insufficient to establish that he and Mr. Guth (deceased) were the inventors of the subject matter disclosed in a patent naming Campbell, Guth, Danziger, and Padron as inventors because "[n]othing in the declaration itself, or in addition to the declaration, provides any context, explanation, or evidence to lend credence to the inventor's bare assertion." Id. at 1345, 123 USPQ2d at 1149.).
II. DERIVATION
"Derivation" as used in the discussion below is in the context of pre-AIA law. "Derivation proceedings" as created in the AIA are discussed in MPEP § 2310 et seq.
When the unclaimed subject matter of a patent, application publication, or other publication is the inventor’s or at least one joint inventor’s own invention, a rejection, which is not a statutory bar, on that patent or publication may be removed by submission of evidence establishing the fact that the patentee, applicant of the published application, or author derived his or her knowledge of the relevant subject matter from the inventor or at least one joint inventor. Moreover the inventor or at least one joint inventor must further show that he or she made the invention upon which the relevant disclosure in the patent, application publication, or other publication is based. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969); In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969). See also MPEP §§ 2132.01, 2136.05 and 2137.
715.01(d) Activities Applied Against the Claims [R-08.2017]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 or 103 based on an activity showing that the claimed invention was used or known prior to the filing date of the application may be overcome by an affidavit or declaration under 37 CFR 1.131(a) establishing a date of invention prior to the date of the activity. Alternatively, the applicant(s) may overcome the rejection by filing a specific affidavit or declaration under 37 CFR 1.132 showing that the activity was performed by the inventor or at least one joint inventor.
715.02 How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims [R-08.2017]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
The 37 CFR 1.131(a) affidavit or declaration must establish possession of either the whole invention claimed or something falling within the claim (such as a species of a claimed genus), in the sense that the claim as a whole reads on it. In re Tanczyn, 347 F.2d 830, 146 USPQ 298 (CCPA 1965) (Where applicant claims an alloy comprising both nitrogen and molybdenum, an affidavit showing applicant made an alloy comprising nitrogen but not molybdenum is not sufficient under 37 CFR 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 103 based on the combined teachings of one reference disclosing an alloy comprising nitrogen but not molybdenum and a second reference disclosing an alloy comprising molybdenum but not nitrogen). Note, however, where the differences between the claimed invention and the disclosure of the reference(s) are so small as to render the claims obvious over the reference(s), an affidavit or declaration under 37 CFR 1.131(a) is required to show no more than the reference shows. In re Stryker, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971). In other words, where the examiner, in rejecting a claim under pre-AIA 35 U.S.C. 103, has treated a claim limitation as being an obvious feature or modification of the disclosure of the reference(s) relied upon, without citation of a reference which teaches such feature or modification, a 37 CFR 1.131(a) affidavit or declaration may be sufficient to overcome the rejection even if it does not show such feature or modification.
Further, a 37 CFR 1.131(a) affidavit is not insufficient merely because it does not show the identical disclosure of the reference(s) or the identical subject matter involved in the activity relied upon. If the affidavit contains facts showing a completion of the invention commensurate with the extent of the invention as claimed is shown in the reference or activity, the affidavit or declaration is sufficient, whether or not it is a showing of the identical disclosure of the reference or the identical subject matter involved in the activity. See In re Wakefield, 422 F.2d 897, 164 USPQ 636 (CCPA 1970).
Even if applicant’s 37 CFR 1.131(a) affidavit is not fully commensurate with the rejected claim, the applicant can still overcome the rejection by showing that the differences between the claimed invention and the showing under 37 CFR 1.131(a) would have been obvious to one of ordinary skill in the art, in view of applicant’s 37 CFR 1.131(a) evidence, prior to the effective date of the reference(s) or the activity. Such evidence is sufficient because applicant’s possession of what is shown carries with it possession of variations and adaptations which would have been obvious, at the same time, to one of ordinary skill in the art. However, the affidavit or declaration showing must still establish possession of the invention (i.e., the basic inventive concept) and not just of what one reference (in a combination of applied references) happens to show, if that reference does not itself teach the basic inventive concept. In re Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974) (Claimed invention was use of electrostatic forces to adhere dry starch particles to a wet paper web on the Fourdrinier wire of a paper-making machine. 37 CFR 1.131 affidavit established use of electrostatic forces to adhere starch particles to wet blotting paper moved over a fluidized bed of starch particles prior to the applied reference date. Affidavit was sufficient in view of prior art reference showing that deposition of dry coatings directly on wet webs on the Fourdrinier wire of a paper-making machine was well known in the art prior to the date of the applied reference. The affidavit established possession of the basic invention, i.e., use of electrostatic forces to adhere starch to wet paper.).
I. SWEARING BEHIND ONE OF A PLURALITY OF COMBINED REFERENCES
Applicant may overcome a pre-AIA 35 U.S.C. 103 rejection based on a combination of references by showing completion of the invention by applicant prior to the effective date of any of the references; applicant need not antedate the reference with the earliest filing date. However, as discussed above, applicant’s 37 CFR 1.131(a) affidavit must show possession of either the whole invention as claimed or something falling within the claim(s) prior to the effective date of the reference being antedated; it is not enough merely to show possession of what the reference happens to show if the reference does not teach the basic inventive concept.
Where a claim has been rejected under pre-AIA 35 U.S.C. 103 based on Reference A in view of Reference B, with the effective date of secondary Reference B being earlier than that of Reference A, the applicant can rely on the teachings of Reference B to show that the differences between what is shown in the 37 CFR 1.131(a) affidavit or declaration and the claimed invention would have been obvious to one of ordinary skill in the art prior to the date of Reference A. However, the 37 CFR 1.131(a) affidavit or declaration must still establish possession of the claimed invention, not just what Reference A shows, if Reference A does not teach the basic inventive concept.
II. GENERAL RULE AS TO GENERIC CLAIMS
A reference or activity applied against generic claims may (in most cases) be antedated as to such claims by an affidavit or declaration under 37 CFR 1.131(a) showing completion of the invention of only a single species, within the genus, prior to the effective date of the reference or activity (assuming, of course, that the reference or activity is not a statutory bar or a patent, or an application publication, claiming the same invention). See Ex parte Biesecker, 144 USPQ 129 (Bd. App. 1964). See, also, In re Fong, 288 F.2d 932, 129 USPQ 264 (CCPA 1961); In re Dafano, 392 F.2d 280, 157 USPQ 192 (CCPA 1968) (distinguishing chemical species of genus compounds from embodiments of a single invention). See, however, MPEP § 715.03 for practice relative to cases in unpredictable arts.
715.03 Genus-Species, Practice Relative to Cases Where Predictability Is in Question [R-08.2017]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Where generic claims have been rejected on a reference or activity which discloses a species not antedated by the affidavit or declaration, the rejection will not ordinarily be withdrawn, subject to the rules set forth below, unless the applicant is able to establish possession of the generic invention prior to the effective date of the reference or activity. In other words, the affidavit or declaration under 37 CFR 1.131(a) must show as much as the minimum disclosure required by a patent specification to furnish support for a generic claim.
I. REFERENCE OR ACTIVITY DISCLOSES SPECIES
A. Species Claim
Where the claim under rejection recites a species and the reference or activity discloses the claimed species, the rejection can be overcome under 37 CFR 1.131(a) directly by showing prior completion of the claimed species or indirectly by a showing of prior completion of a different species coupled with a showing that the claimed species would have been an obvious modification of the species completed by applicant. See In re Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974).
B. Genus Claim
The principle is well established that the disclosure of a species in a cited reference is sufficient to prevent a later applicant from obtaining a "generic claim." In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989); In re Slayter, 276 F.2d 408, 125 USPQ 345 (CCPA 1960).
Where the only pertinent disclosure in the reference or activity is a single species of the claimed genus, the applicant can overcome the rejection directly under 37 CFR 1.131(a) by showing prior possession of the species disclosed in the reference or activity. On the other hand, a reference or activity which discloses several species of a claimed genus can be overcome directly under 37 CFR 1.131(a) only by a showing that the applicant completed, prior to the date of the reference or activity, all of the species shown in the reference. In re Stempel, 241 F.2d 755, 113 USPQ 77 (CCPA 1957).
Proof of prior completion of a species different from the species of the reference or activity will be sufficient to overcome a reference indirectly under 37 CFR 1.131(a) if the species shown in the reference or activity would have been obvious in view of the species shown to have been made by the applicant. In re Clarke, 356 F.2d 987, 148 USPQ 665 (CCPA 1966); In re Plumb, 470 F.2d 1403, 176 USPQ 323 (CCPA 1973); In re Hostettler, 356 F.2d 562, 148 USPQ 514 (CCPA 1966). Alternatively, if the applicant cannot show possession of the species of the reference or activity in this manner, the applicant may be able to antedate the reference or activity indirectly by, for example, showing prior completion of one or more species, placing applicant in possession of the claimed genus prior to the reference’s or activity’s date. The test is whether the species completed by applicant prior to the reference date or the activity’s date provided an adequate basis for inferring that the invention has generic applicability. In re Plumb, 470 F.2d 1403, 176 USPQ 323 (CCPA 1973); In re Rainer, 390 F.2d 771, 156 USPQ 334 (CCPA 1968); In re Clarke, 356 F.2d 987, 148 USPQ 665 (CCPA 1966); In re Shokal, 242 F.2d 771, 113 USPQ 283 (CCPA 1957).
It is not necessary for the affidavit evidence to show that the applicant viewed the invention as encompassing more than the species actually made. The test is whether the facts set out in the affidavit are such as would persuade one skilled in the art that the applicant possessed so much of the invention as is shown in the reference or activity. In re Schaub, 537 F.2d 509, 190 USPQ 324 (CCPA 1976).
C. Species Versus Embodiments
References or activities which disclose one or more embodiments of a single claimed invention, as opposed to species of a claimed genus, can be overcome by filing a 37 CFR 1.131(a) affidavit showing prior completion of a single embodiment of the invention, whether it is the same or a different embodiment from that disclosed in the reference or activity. See In re Fong, 288 F.2d 932, 129 USPQ 264 (CCPA 1961) (Where applicant discloses and claims a washing solution comprising a detergent and polyvinylpyrrolidone (PVP), with no criticality alleged as to the particular detergent used, the PVP being used as a soil-suspending agent to prevent the redeposition of the soil removed, the invention was viewed as the use of PVP as a soil-suspending agent in washing with a detergent. The disclosure in the reference of the use of PVP with two detergents, both of which differed from that shown in applicant’s 37 CFR 1.131(a) affidavit, was considered a disclosure of different embodiments of a single invention, rather than species of a claimed genus); In re Defano, 392 F.2d 280, 157 USPQ 192 (CCPA 1968).
II. REFERENCE OR ACTIVITY DISCLOSES CLAIMED GENUS
In general, where the reference or activity discloses the claimed genus, a showing of completion of a single species within the genus is sufficient to antedate the reference or activity under 37 CFR 1.131(a). Ex parte Biesecker, 144 USPQ 129 (Bd. App. 1964).
In cases where predictability is in question, on the other hand, a showing of prior completion of one or a few species within the disclosed genus is generally not sufficient to overcome the reference or activity. In re Shokal, 242 F.2d 771, 113 USPQ 283 (CCPA 1957). The test is whether the species completed by applicant prior to the reference date or the date of the activity provided an adequate basis for inferring that the invention has generic applicability. In re Mantell, 454 F.2d 1398, 172 USPQ 530 (CCPA 1973); In re Rainer, 390 F.2d 771, 156 USPQ 334 (CCPA 1968); In re DeFano, 392 F.2d 280, 157 USPQ 192 (CCPA 1968); In re Clarke, 356 F.2d 987, 148 USPQ 665 (CCPA 1965). In the case of a small genus such as the halogens, which consists of four species, a reduction to practice of three, or perhaps even two, species might show possession of the generic invention, while in the case of a genus comprising hundreds of species, reduction to practice of a considerably larger number of species would be necessary. In re Shokal, supra.
It is not necessary for the affidavit evidence to show that the applicant viewed applicant's invention as encompassing more than the species the applicant actually made. The test is whether the facts set out in the affidavit are such as would persuade one skilled in the art that the applicant possessed so much of the invention as is shown in the reference. In re Schaub, 537 F. 509, 190 USPQ 324 (CCPA 1976).
715.04 Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
I. WHO MAY MAKE AFFIDAVIT OR DECLARATION
Affidavits or declarations filed under 37 CFR 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103 must be made by either:
- (A) All the inventors of the subject matter claimed.
- (B) Less than all named inventors of an application if it is shown by affidavit or declaration that less than all named inventors of an application invented the subject matter of the claim or claims under rejection. For example, one of two joint inventors is accepted where it is shown that one of the joint inventors is the sole inventor of the claim or claims under rejection.
- (C) For affidavits and declarations submitted in an application filed before September 16, 2012, a joint inventor or assignee under pre-AIA 37 CFR 1.47 if a petition under pre-AIA 37 CFR 1.47 was granted or the application was accepted under pre-AIA 37 CFR 1.42 or 1.43.
- (D) For affidavits and declarations in applications filed before September 16, 2012, the legal representative of a deceased, insane or otherwise legally incapacitated inventor under pre-AIA 37 CFR 1.42 or 1.43.
- (E) For affidavits and declarations submitted in applications filed on or after September 16, 2012, the party qualified under 37 CFR 1.42 or 1.46.
- (F) The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the inventor. Ex parte Foster, 1903 C.D. 213, 105 OG 261 (Comm’r Pat. 1903).
- (G) The owner of the patent under reexamination.
For affidavits and declarations submitted in applications filed before September 16, 2012, where one or more of the named inventors of the subject matter of the rejected claim(s) (who had originally signed the oath or declaration for patent application under 37 CFR 1.63 ) is thereafter unavailable to sign an affidavit or declaration under 37 CFR 1.131(a), the affidavit or declaration under 37 CFR 1.131(a) may be signed by the remaining joint inventors provided a petition under 37 CFR 1.183 requesting waiver of the signature of the unavailable inventor is submitted with the affidavit or declaration under 37 CFR 1.131(a). Proof that the non-signing inventor is unavailable or cannot be found (similar to the proof required for a petition under pre-AIA 37 CFR 1.47 ) must be submitted with the petition under 37 CFR 1.183 (see MPEP § 409.03(d)). Petitions under 37 CFR 1.183 are decided by the Office of Petitions (see MPEP § 1002.02(b)).
II. FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS
An affidavit is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths. See MPEP § 602 et seq. for additional information regarding formal requirements of affidavits.
37 CFR 1.68 permits a declaration to be used instead of an affidavit. The declaration must include an acknowledgment by the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.
715.05 U.S. Patent or Application Publication Claiming Same Invention [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
For applications subject to pre-AIA 35 U.S.C. 102, when the reference in question is a noncommonly owned U.S. patent or patent application publication claiming the same invention as applicant and its publication date is less than 1 year prior to the presentation of claims to that invention in the application being examined, applicant’s remedy, if any, must be by way of 37 CFR 41.202 instead of 37 CFR 1.131(a). If the reference is claiming the same invention as the application and its publication date is less than 1 year prior to the presentation of claims to that invention in the application, this fact should be noted in the Office action. The reference can then be overcome only by way of interference. See MPEP Chapter 2300. If the reference is a U.S. patent which claims the same invention as the application and its issue date is more than 1 year prior to the presentation of claims to that invention in the application, a rejection of the claims of the application under pre-AIA 35 U.S.C. 135(b)(1) applicable generally to applications subject to pre-AIA 35 U.S.C. 102, see MPEP § 2159, should be made. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) (The court holding that application of 35 U.S.C. 135(b) is not limited to inter partes interference proceedings, but may be used as a basis for ex parte rejections.). The expression "prior to one year from the date on which the patent was granted" in pre-AIA 35 U.S.C. 135(b) includes the one-year anniversary date of the issuance of a patent. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964).
If the reference is a U.S. patent application publication under 35 U.S.C. 122(b), or a WIPO publication on an international application filed on or after November 29, 2000, which claims the same invention as the application being examined and its publication date is more than 1 year prior to the presentation of claims to that invention in the application being examined, a rejection of the claims of the application (being examined) under pre-AIA 35 U.S.C. 135(b)(2) applicable generally to applications subject to pre-AIA 35 U.S.C. 102, see MPEP § 2159, should be made only if the application being examined was filed after the publication date of the reference.
Form paragraph 23.14 or 23.14.01 may be used when making a rejection under pre-AIA 35 U.S.C. 135(b).
¶ 23.14 Claims Not Copied Within One Year of Patent Issue Date
Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(1) as not being made prior to one year from the date on which U.S. Patent No. [2] was granted. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.
¶ 23.14.01 Claims Not Copied Within One Year Of Application Publication Date
Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(2) as not being made prior to one year from the date on which [2] was published under 35 U.S.C. 122(b). See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.
Examiner Note:
1. In bracket 2, insert the publication number of the published application.
2. This form paragraph should only be used if the application being examined was filed after the publication date of the published application.
Where the reference and the application or patent under reexamination are commonly owned, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the reference are not identical but are not patentably distinct, a terminal disclaimer and an affidavit or declaration under 37 CFR 1.131(c) may be used to overcome a rejection under 35 U.S.C. 103. See MPEP § 718.
A 37 CFR 1.131(a) affidavit is ineffective to overcome a United States patent or patent application publication, not only where there is a verbatim correspondence between claims of the application and of the patent, but also where there is no patentable distinction between the respective claims. In re Clark, 457 F.2d 1004, 173 USPQ 359 (CCPA 1972); In re Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962); In re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958); In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA 1956); In re Wagenhorst, 62 F.2d 831, 16 USPQ 126 (CCPA 1933).
If the application (or patent under reexamination) and the domestic reference contain claims which are identical, or which are not patentably distinct, then the application and patent are claiming "interfering subject matter" as defined in 37 CFR 41.203(a).
As provided in 37 CFR 41.203(a), an interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa. An applicant who is claiming an invention which is identical to, or obvious in view of, the invention as claimed in a domestic patent or patent application publication cannot employ an affidavit under 37 CFR 1.131(a) as a means for avoiding an interference with the reference. To allow an applicant to do so would result in the issuance of two patents to the same invention.
Since 37 CFR 1.131(a) defines "interfering subject matter" in the same way as the interference rules (37 CFR 41.203(a) ), the USPTO cannot prevent an applicant from overcoming a reference by a 37 CFR 1.131(a) affidavit or declaration on the grounds that the reference claims applicant’s invention and, at the same time, deny applicant an interference on the grounds that the claims of the application and those of the reference are not for substantially the same invention. See In re Eickmeyer, 602 F.2d 974, 202 USPQ 655 (CCPA 1979). Where, in denying an applicant’s motion in interference to substitute a broader count, it is held that the limitation to be deleted was material for the opponent patentee, this constitutes a holding that the proposed count is for an invention which is not interfering subject matter with respect to the claims of the reference. Therefore, the applicant may file an affidavit or declaration under 37 CFR 1.131(a) to overcome a prior art rejection based on the reference. Adler v. Kluver, 159 USPQ 511 (Bd. Pat. Int. 1968).
Form paragraph 7.58.fti (reproduced in MPEP § 715) may be used to note such a situation in the Office action.
715.06 [Reserved]
715.07 Facts and Documentary Evidence [R-08.2017]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
I. GENERAL REQUIREMENTS
The essential thing to be shown under 37 CFR 1.131(a) is priority of invention and this may be done by any satisfactory evidence of the fact. FACTS, not conclusions, must be alleged. Evidence in the form of exhibits may accompany the affidavit or declaration. Each exhibit relied upon should be specifically referred to in the affidavit or declaration, in terms of what it is relied upon to show. For example, the allegations of fact might be supported by submitting as evidence one or more of the following:
- (A) attached sketches;
- (B) attached blueprints;
- (C) attached photographs;
- (D) attached reproductions of notebook entries;
- (E) an accompanying model;
- (F) attached supporting statements by witnesses, where verbal disclosures are the evidence relied upon. Ex parte Ovshinsky, 10 USPQ2d 1075 (Bd. Pat. App. & Inter. 1989);
- (G) testimony given in an interference. Where interference testimony is used, the applicant must point out which parts of the testimony are being relied on; examiners cannot be expected to search the entire interference record for the evidence;
- (H) documents submitted under the Disclosure Document Program (discontinued February 1, 2007) may be used as documentary evidence of conception.
Exhibits and models must comply with the requirements of 37 CFR 1.91 to be entered into an application file. See also MPEP § 715.07(d).
A general allegation that the invention was completed prior to the date of the reference is not sufficient. Similarly, a declaration by the inventor to the effect that his or her invention was conceived or reduced to practice prior to the reference date, without a statement of facts demonstrating the correctness of this conclusion, is insufficient to satisfy 37 CFR 1.131(a). "An inventor cannot rely on uncorroborated testimony to establish a prior invention date." In re NTP, Inc., 654 F.3d 1279, 1291, 99 USPQ2d 1481, 1488 (Fed. Cir. 2011).
"When the issue of priority concerns the antedating of a reference, the applicant is required to demonstrate, with sufficient documentation, that the applicant was in possession of the later-claimed invention before the effective date of the reference. Demonstration of such priority requires documentary support, from which factual findings and inferences are drawn, in application of the rules and law of conception, reduction to practice, and diligence."
In re Steed, 802 F.3d 1311, 1316, 116 USPQ2d 1760 (Fed. Cir. 2015).
37 CFR 1.131(b) requires that original exhibits of drawings or records, or photocopies thereof, accompany and form part of the affidavit or declaration or their absence satisfactorily explained. In Ex parte Donovan, 1890 C.D. 109, 52 OG 309 (Comm’r Pat. 1890) the court stated:
If the applicant made sketches he should so state, and produce and describe them; if the sketches were made and lost, and their contents remembered, they should be reproduced and furnished in place of the originals. The same course should be pursued if the disclosure was by means of models. If neither sketches nor models are relied upon, but it is claimed that verbal disclosures, sufficiently clear to indicate definite conception of the invention, were made the witness should state as nearly as possible the language used in imparting knowledge of the invention to others.
When reviewing a 37 CFR 1.131(a) affidavit or declaration, the examiner must consider all of the evidence presented in its entirety, including the affidavits or declarations and all accompanying exhibits, records and "notes." An accompanying exhibit need not support all claimed limitations, provided that any missing limitation is supported by the declaration itself. Ex parte Ovshinsky, 10 USPQ2d 1075 (Bd. Pat. App. & Inter. 1989).
The affidavit or declaration and exhibits must clearly explain which facts or data applicant is relying on to show completion of his or her invention prior to the particular date. Specifically, "[t]he burden of showing actual reduction of practice is on the party seeking its benefit." In re Steed, 802 F.3d 1311, 1317-18, 116 USPQ2d 1760 (Fed. Cir. 2015)(citing to In re NTP, Inc., 654 F.3d 1279, 1291, 99 USPQ2d 1481, 1488 (Fed. Cir. 2011)). Vague and general statements in broad terms about what the exhibits describe along with a general assertion that the exhibits describe a reduction to practice "amounts essentially to mere pleading, unsupported by proof or a showing of facts" and, thus, does not satisfy the requirements of 37 CFR 1.131(b). In re Borkowski, 505 F.2d 713, 184 USPQ 29 (CCPA 1974). Applicant must give a clear explanation of the exhibits pointing out exactly what facts are established and relied on by applicant. 505 F.2d at 718-19, 184 USPQ at 33. See also In re Harry, 333 F.2d 920, 142 USPQ 164 (CCPA 1964) (Affidavit "asserts that facts exist but does not tell what they are or when they occurred.").
II. ESTABLISHMENT OF DATES
If the dates of the exhibits have been removed or blocked off, the matter of dates can be taken care of in the body of the oath or declaration.
When alleging that conception or a reduction to practice occurred prior to the effective date of the reference, the dates in the oath or declaration may be the actual dates or, if disclosure of the actual dates is not desired, the declarant/affiant may merely allege that the acts referred to occurred prior to a specified date. However, the actual dates of acts relied on to establish diligence must be provided. See MPEP § 715.07(a) regarding the diligence requirement.
III. THREE WAYS TO SHOW PRIOR INVENTION
The affidavit or declaration must state FACTS and produce such documentary evidence and exhibits in support thereof as are available to show conception and completion of invention in this country or in a NAFTA or WTO member country (MPEP § 715.07(c)), at least the conception being at a date prior to the effective date of the reference. Where there has not been reduction to practice prior to the date of the reference, diligence in the completion of the invention from a time just prior to the date of the reference continuously up to the date of an actual reduction to practice or up to the date of filing the application (filing constitutes a constructive reduction to practice, 37 CFR 1.131 ) must be shown.
As discussed above, 37 CFR 1.131(b) provides three ways in which an applicant can establish prior invention of the claimed subject matter. The showing of facts must be sufficient to show:
- (A) (actual) reduction to practice of the invention prior to the effective date of the reference; or
- (B) conception of the invention prior to the effective date of the reference coupled with due diligence from prior to the reference date to a subsequent (actual) reduction to practice; or
- (C) conception of the invention prior to the effective date of the reference coupled with due diligence from prior to the reference date to the filing date of the application (constructive reduction to practice).
A conception of an invention, though evidenced by disclosure, drawings, and even a model, is not a complete invention under the patent laws, and confers no rights on an inventor, and has no effect on a subsequently granted patent to another, UNLESS THE INVENTOR FOLLOWS IT WITH REASONABLE DILIGENCE BY SOME OTHER ACT, such as an actual reduction to practice or filing an application for a patent. Automatic Weighing Mach. Co. v. Pneumatic Scale Corp., 166 F.2d 288, 1909 C.D. 498, 139 OG 991 (1st Cir. 1909).
Conception is the mental part of the inventive act, but it must be capable of proof, as by drawings, complete disclosure to another person, etc. In Mergenthaler v. Scudder, 1897 C.D. 724, 81 OG 1417 (D.C. Cir. 1897), it was established that conception is more than a mere vague idea of how to solve a problem; the means themselves and their interaction must be comprehended also.
In general, proof of actual reduction to practice requires a showing that the apparatus actually existed and worked for its intended purpose. However, "there are some devices so simple that a mere construction of them is all that is necessary to constitute reduction to practice." In re Asahi/America Inc., 68 F.3d 442, 37 USPQ2d 1204, 1206 (Fed. Cir. 1995) (Citing Newkirk v. Lulejian, 825 F.2d 1581, 3USPQ2d 1793 (Fed. Cir. 1987) and Sachs v. Wadsworth, 48 F.2d 928, 929, 9 USPQ 252, 253 (CCPA 1931). The claimed restraint coupling held to be so simple a device that mere construction of it was sufficient to constitute reduction to practice. Photographs, coupled with articles and a technical report describing the coupling in detail were sufficient to show reduction to practice.).
The facts to be established under 37 CFR 1.131(a) are similar to those to be proved in interference. The difference lies in the way in which the evidence is presented. If applicant disagrees with a holding that the facts are insufficient to overcome the rejection, the remedy is by appeal from the continued rejection.
See MPEP § 2138.04 through § 2138.06 for a detailed discussion of the concepts of conception, reasonable diligence, and reduction to practice.
For the most part, the terms "conception," "reasonable diligence," and "reduction to practice" have the same meanings under 37 CFR 1.131(a) as they have in interference proceedings. However, in In re Eickmeyer, 602 F.2d 974, 202 USPQ 655 (CCPA 1979), the court stated:
The purpose of filing a [37 CFR 1.]131 affidavit is not to demonstrate prior invention, per se, but merely to antedate the effective date of a reference. See In re Moore, 58 CCPA 1340, 444 F.2d 572, 170 USPQ 260 (1971). Although the test for sufficiency of an affidavit under Rule 131(b) parallels that for determining priority of invention in an interference under pre-AIA 35 U.S.C. 102(g), it does not necessarily follow that Rule 131 practice is controlled by interference law. To the contrary, "[t]he parallel to interference practice found in Rule 131(b) should be recognized as one of convenience rather than necessity." Id. at 1353, 444 F.2d at 580, 170 USPQ at 267. Thus, "the ‘conception’ and ‘reduction to practice’ which must be established under the rule need not be the same as what is required in the ‘interference’ sense of those terms." Id.; accord, In re Borkowski, 505 F.2d 713, 718-19, 184 USPQ 29, 33 (CCPA 1974).
One difference is that in interference practice a reduction to practice requires a proof that a utility was known, whereas under 37 CFR 1.131(a) practice, proof of a utility must be shown only if the reference discloses a utility. In re Wilkinson, 304 F.2d 673, 134 USPQ 171 (CCPA 1962); In re Moore, 444 F.2d 572, 170 USPQ 260 (CCPA 1971). Where proof of utility is required, whether or not test results are required to establish the utility of the subject matter in question depends on the facts of each case. The ultimate issue is whether the evidence is such that one of ordinary skill in the art would be satisfied to a reasonable certainty that the subject matter necessary to antedate the reference possessed the alleged utility. In re Blake, 358 F.2d 750, 149 USPQ 217 (CCPA 1966). Also, in interference practice, conception, reasonable diligence, and reduction to practice require corroboration, whereas averments made in a 37 CFR 1.131(a) affidavit or declaration do not require corroboration; an applicant may stand on his or her own affidavit or declaration if he or she so elects. Ex parte Hook, 102 USPQ 130 (Bd. App. 1953).
Form paragraph 7.59.fti or 7.63.fti (both reproduced in MPEP § 715) may be used where insufficient evidence is included in a 37 CFR 1.131(a) affidavit.
715.07(a) Diligence [R-08.2017]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Where conception occurs prior to the date of the reference, but reduction to practice is afterward, it is not enough merely to allege that the inventor or inventors had been diligent. Rather, applicant must show evidence of facts establishing diligence.
In determining the sufficiency of a 37 CFR 1.131(a) affidavit or declaration, diligence need not be considered unless conception of the invention prior to the effective date is clearly established, pursuant to 37 CFR 1.131(b), diligence comes into question only after prior conception is established.
In patent law, an inventor is either diligent at a given time or he is not diligent; there are no degrees of diligence. An applicant may be diligent within the meaning of the patent law when he or she is doing nothing, if his or her lack of activity is excused. Note, however, that the record must set forth an explanation or excuse for the inactivity; the USPTO or courts will not speculate on possible explanations for delay or inactivity. See In re Nelson, 420 F.2d 1079, 164 USPQ 458 (CCPA 1970). Diligence must be judged on the basis of the particular facts in each case. See In re Steed, 802 F.3d 1311, 1320, 116 USPQ2d 1760, 1767 (Fed. Cir. 2015)("Although the claimed invention is a method conducted by computer software, this does not avoid the need for sufficient evidentiary specificity"). See MPEP § 2138.06 for a detailed discussion of the diligence requirement for proving prior invention.
Under 37 CFR 1.131(a), the critical period in which diligence must be shown begins just prior to the effective date of the reference or activity and ends with the date of a reduction to practice, either actual or constructive (i.e., filing a United States patent application). Note, therefore, that only diligence before reduction to practice is a material consideration. Any lack of due diligence between an actual reduction to practice of an invention and the filing of an application thereon is not relevant to the sufficiency of an affidavit or declaration under 37 CFR 1.131(a).
Form paragraph 7.62.fti (reproduced in MPEP § 715) may be used to respond to a 37 CFR 1.131(a) affidavit where diligence is lacking.
715.07(b) Interference Testimony Sometimes Used [R-08.2017]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
In place of an affidavit or declaration the testimony in an interference may be sometimes used to antedate a reference in lieu of a 37 CFR 1.131(a) affidavit or declaration.
The part of the testimony to form the basis of priority over the reference should be pointed out. Ex parte Bowyer, 1939 C.D. 5, 42 USPQ 526 (Comm’r Pat. 1939).
715.07(c) Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country [R-07.2015]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Pre-AIA 35 U.S.C. 104 Invention Made Abroad.
- (a) IN GENERAL.—
- (1) PROCEEDINGS.—In proceedings in the Patent and Trademark Office, in the courts, and before any other competent authority, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country other than a NAFTA country or a WTO member country, except as provided in sections 119 and 365.
- (2) RIGHTS.—If an invention was made by a person, civil or military—
- (A) while domiciled in the United States, and serving in any other country in connection with operations by or on behalf of the United States,
- (B) while domiciled in a NAFTA country and serving in another country in connection with operations by or on behalf of that NAFTA country, or
- (C) while domiciled in a WTO member country and serving in another country in connection with operations by or on behalf of that WTO member country, that person shall be entitled to the same rights of priority in the United States with respect to such invention as if such invention had been made in the United States, that NAFTA country, or that WTO member country, as the case may be.
- (3) USE OF INFORMATION.—To the extent that any information in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or disproving a date of invention has not been made available for use in a proceeding in the Patent and Trademark Office, a court, or any other competent authority to the same extent as such information could be made available in the United States, the Director, court, or such other authority shall draw appropriate inferences, or take other action permitted by statute, rule, or regulation, in favor of the party that requested the information in the proceeding.
- (b) DEFINITIONS.—As used in this section—
- (1) The term "NAFTA country" has the meaning given that term in section 2(4) of the North American Free Trade Agreement Implementation Act; and
- (2) The term "WTO member country" has the meaning given that term in section 2(10) of the Uruguay Round Agreements Act.
The 37 CFR 1.131(a) affidavit or declaration must contain an allegation that the acts relied upon to establish the date prior to the reference or activity were carried out in this country or in a NAFTA country or WTO member country. See pre-AIA 35 U.S.C. 104.
Under 37 CFR 1.131(a), which provides for the establishment of a date of completion of the invention in a NAFTA or WTO member country, as well as in the United States, the applicant or patent owner can establish a date of completion in a NAFTA member country on or after December 8, 1993, the effective date of section 331 of Public Law 103-182, the North American Free Trade Agreement Act, and can establish a date of completion in a WTO member country other than a NAFTA member country on or after January 1, 1996, the effective date of section 531 of Public Law 103-465, the Uruguay Round Agreements Act. Acts occurring prior to the effective dates of NAFTA or URAA may be relied upon to show completion of the invention; however, a date of completion of the invention may not be established under 37 CFR 1.131(a) before December 8, 1993 in a NAFTA country or before January 1, 1996 in a WTO country other than a NAFTA country.
715.07(d) Disposition of Exhibits [R-11.2013]
Exhibits, such as those filed as part of an affidavit or declaration under 37 CFR 1.131(a), must comply with the requirements of 37 CFR 1.91 to be entered into an application file. Exhibits that do not comply with the requirements of 37 CFR 1.91 will be disposed of or returned to applicant at the discretion of the Office. See also MPEP § 608.03(a).
715.08 Decided by Primary Examiner [R-11.2013]
The question of sufficiency of affidavits or declarations under 37 CFR 1.131(a) should be reviewed and decided by a primary examiner.
Review of an examiner’s decision with regard to questions of formal sufficiency and propriety of an affidavit or declaration under 37 CFR 1.131(a) is by a petition filed under 37 CFR 1.181. Such petitions are answered by the Technology Center Directors (MPEP § 1002.02(c)).
Review of an examiner’s determination on the merits of a 37 CFR 1.131(a) affidavit or declaration is by appeal to the Patent Trial and Appeal Board.
715.09 Timely Presentation [R-11.2013]
Affidavits or declarations under 37 CFR 1.131(a) must be timely presented in order to be admitted. Affidavits and declarations submitted under 37 CFR 1.131(a) and other evidence traversing rejections are considered timely if submitted:
- (A) prior to a final rejection;
- (B) before appeal in an application not having a final rejection;
- (C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e); or
- (D) after the prosecution is closed (e.g., after a final rejection, after appeal, or after allowance) if applicant files the affidavit or other evidence with a request for continued examination (RCE) under 37 CFR 1.114 in a utility or plant application filed on or after June 8, 1995; or a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application.
All admitted affidavits and declarations are acknowledged and commented upon by the examiner in his or her next succeeding action.
For affidavits or declarations under 37 CFR 1.131(a) filed after appeal, see 37 CFR 41.33(d) and MPEP § 1206 and § 1211.03.
Review of an examiner’s refusal to enter an affidavit as untimely is by petition and not by appeal to the Patent Trial and Appeal Board. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941). See MPEP § 715.08 regarding review of questions of propriety of 37 CFR 1.131(a) affidavits and declarations.
715.10 Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
Any affidavits or declarations submitted under 37 CFR 1.131(a) and the accompanying evidence must be reviewed carefully by the examiner in order to determine whether they show that the claimed invention was "in public use" or "on sale" in this country more than one year prior to the effective filing date of the application, which acts constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). Although the rejection based on the reference(s) or activity sought to be antedated may actually be overcome by such an affidavit or declaration, the effect of the applicant’s prior "public use" or "on sale" activities may not be overcome under 37 CFR 1.131(a). See MPEP § 2133.03 regarding rejections based on "public use" and "on sale" statutory bars under pre-AIA 35 U.S.C. 102.
Where the 37 CFR 1.131(a) evidence relies on an embodiment of the invention not disclosed in the application, the question of whether the application includes the "best mode" must be considered. However, a "best mode" rejection should not be made unless the record, taken as a whole, establishes by a preponderance of the evidence that applicant’s specification has not set forth the best mode contemplated by the inventor of carrying out the invention. See MPEP §§ 2165 - § 2165.04 regarding the best mode requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
716 Affidavits or Declarations Traversing Rejections, 37 CFR 1.132 [R-11.2013]
37 C.F.R. 1.132 Affidavits or declarations traversing rejections or objections.
When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.
It is the responsibility of the primary examiner to personally review and decide whether affidavits or declarations submitted under 37 CFR 1.132 for the purpose of traversing grounds of rejection are responsive to the rejection and present sufficient facts to overcome the rejection.
This rule sets forth the general policy of the Office consistently followed for a long period of time of receiving affidavit evidence traversing rejections or objections. All affidavits or declarations presented which do not fall within or under other specific rules are to be treated or considered as falling under this rule.
Form paragraph 7.65 or 7.66 and any of form paragraphs 7.66.01 through 7.66.05, as appropriate, should be used to comment on a 37 CFR 1.132 affidavit or declaration.
¶ 7.65 Affidavit or Declaration Under 37 CFR 1.132: Effective To Withdraw Rejection
The [1] under 37 CFR 1.132 filed [2] is sufficient to overcome the rejection of claim [3] based upon [4].
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. In bracket 2, insert the filing date of the affidavit or declaration.
3. In bracket 3, insert the affected claim or claims.
4. In bracket 4, indicate the rejection that has been overcome, including the statutory grounds, e.g.: insufficiency of disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; lack of utility under 35 U.S.C. 101; inoperativeness under 35 U.S.C. 101; a specific reference applied under 35 U.S.C. 103; etc. See MPEP § 716.
¶ 7.66 Affidavit or Declaration Under 37 CFR 1.132: Insufficient
The [1] under 37 CFR 1.132 filed [2] is insufficient to overcome the rejection of claim [3] based upon [4] as set forth in the last Office action because:
Examiner Note:
1. In bracket 1, insert either --affidavit-- or --declaration--.
2. In bracket 2, insert the filing date of the affidavit or declaration.
3. In bracket 3, insert the claim or claims affected.
4. In bracket 4, indicate the rejection that has not been overcome, including the statutory grounds, i.e.: insufficiency of disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; lack of utility and/or inoperativeness under 35 U.S.C. 101; a specific reference applied under 35 U.S.C. 103; etc. See MPEP § 716.
5. Following this form paragraph, set forth the reasons for the insufficiency; e.g., categories include: --untimely--; --fails to set forth facts--; --facts presented are not germane to the rejection at issue--;--showing is not commensurate in scope with the claims--; etc. See MPEP § 716. Also include a detailed explanation of the reasons why the affidavit or declaration is insufficient. Any of form paragraphs 7.66.01 - 7.66.05 may be used, as appropriate.
¶ 7.66.01 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Affiant Has Never Seen Invention Before
It includes statements which amount to an affirmation that the affiant has never seen the claimed subject matter before. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.02 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Invention Works as Intended
It includes statements which amount to an affirmation that the claimed subject matter functions as it was intended to function. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.03 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Refers Only to Invention, Not to Claims
It refers only to the system described in the above referenced application and not to the individual claims of the application. As such the declaration does not show that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.04 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: No Evidence of Long-Felt Need
It states that the claimed subject matter solved a problem that was long standing in the art. However, there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem. See MPEP § 716.04.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.66.
2. A full explanation must be provided, if appropriate.
¶ 7.66.05 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Conclusion
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Examiner Note:
This form paragraph should be presented as a conclusion to your explanation of why the affidavit or declaration under 37 CFR 1.132 is insufficient, and it must be preceded by form paragraph 7.66.
716.01 Generally Applicable Criteria [R-08.2012]
The following criteria are applicable to all evidence traversing rejections submitted by applicants, including affidavits or declarations submitted under 37 CFR 1.132:
- (A) Timeliness.
- Evidence traversing rejections must be timely or seasonably filed to be entered and entitled to consideration. In re Rothermel, 276 F.2d 393, 125 USPQ 328 (CCPA 1960).
- Affidavits and declarations submitted under 37 CFR 1.132 and other evidence traversing rejections are considered timely if submitted:
- (1) prior to a final rejection,
- (2) before appeal in an application not having a final rejection,
- (3) after final rejection , but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e); or
- (4) after the prosecution is closed (e.g., after a final rejection, after appeal, or after allowance) if applicant files the affidavit or other evidence with a request for continued examination (RCE) under 37 CFR 1.114 in a utility or plant application filed on or after June 8, 1995; or a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application.
For affidavits or declarations under 37 CFR 1.132 filed after appeal, see 37 CFR 41.33(d) and MPEP § 1206 and § 1211.03.
- (B) Consideration of evidence.
- Evidence traversing rejections, when timely presented, must be considered by the examiner whenever present. All entered affidavits, declarations, and other evidence traversing rejections are acknowledged and commented upon by the examiner in the next succeeding action. The extent of the commentary depends on the action taken by the examiner. Where an examiner holds that the evidence is sufficient to overcome the prima facie case, the comments should be consistent with the guidelines for statements of reasons for allowance. See MPEP § 1302.14. Where the evidence is insufficient to overcome the rejection, the examiner must specifically explain why the evidence is insufficient. General statements such as "the declaration lacks technical validity" or "the evidence is not commensurate with the scope of the claims" without an explanation supporting such findings are insufficient.
716.01(a) Objective Evidence of Nonobviousness [R-08.2017]
OBJECTIVE EVIDENCE MUST BE CONSIDERED WHEN TIMELY PRESENT
Affidavits or declarations, when timely presented, containing evidence of criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc., must be considered by the examiner in determining the issue of obviousness of claims for patentability under 35 U.S.C. 103. The Court of Appeals for the Federal Circuit stated in Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, 218 USPQ 871, 879 (Fed. Cir. 1983) that "evidence rising out of the so-called ‘secondary considerations’ must always when present be considered en route to a determination of obviousness." Such evidence might give light to circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or unobviousness, such evidence may have relevancy. Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); In re Palmer, 451 F.2d 1100, 172 USPQ 126 (CCPA 1971); In re Fielder, 471 F.2d 640, 176 USPQ 300 (CCPA 1973). The Graham v. John Deere pronouncements on the relevance of commercial success, etc. to a determination of obviousness were not negated in Sakraida v. Ag Pro, 425 U.S. 273, 189 USPQ 449 (1976) or Anderson’s-Black Rock Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 USPQ 673 (1969), where reliance was placed upon A&P Tea Co. v. Supermarket Corp., 340 U.S. 147, 87 USPQ 303 (1950). See Dann v. Johnston, 425 U.S. 219, 226 n.4, 189 USPQ 257, 261 n. 4 (1976).
Examiners must consider comparative data in the specification which is intended to illustrate the claimed invention in reaching a conclusion with regard to the obviousness of the claims. In re Margolis, 785 F.2d 1029, 228 USPQ 940 (Fed. Cir. 1986). The lack of objective evidence of nonobviousness does not weigh in favor of obviousness. Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870, 878, 27 USPQ2d 1123, 1129 (Fed. Cir. 1993), cert. denied,127 L. Ed. 232 (1994). However, where a prima facie case of obviousness is established, the failure to provide rebuttal evidence is dispositive.
716.01(b) Nexus Requirement and Evidence of Nonobviousness [R-10.2019]
TO BE OF PROBATIVE VALUE, ANY SECONDARY EVIDENCE MUST BE RELATED TO THE CLAIMED INVENTION (NEXUS REQUIRED)
The weight attached to evidence of secondary considerations by the examiner will depend upon its relevance to the issue of obviousness and the amount and nature of the evidence. Note the great reliance apparently placed on this type of evidence by the Supreme Court in upholding the patent in United States v. Adams, 383 U.S. 39,148 USPQ 479 (1966).
To be given substantial weight in the determination of obviousness or nonobviousness, evidence of secondary considerations must be relevant to the subject matter as claimed, and therefore the examiner must determine whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42, 227 USPQ 657, 673-674 n. 42 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). The term "nexus" designates a factually and legally sufficient connection between the objective evidence of nonobviousness and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert. denied, 488 U.S. 956 (1988).
"Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention." In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011); see also Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) ("If commercial success is due to an element in the prior art, no nexus exists."); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (2006) ("[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent."). In evaluating whether the requisite nexus exists, the identified objective indicia must be directed to what was not known in the prior art, including patents and publications, which may well be the novel combination or arrangement of known individual elements. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007); Veritas Techs. LLC v. Veeam Software Corp., 835 F.3d 1406, 1414-15 (Fed. Cir. 2016).
716.01(c) Probative Value of Objective Evidence [R-10.2019]
I. TO BE OF PROBATIVE VALUE, ANY OBJECTIVE EVIDENCE SHOULD BE SUPPORTED BY ACTUAL PROOF
Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) ("It is well settled that unexpected results must be established by factual evidence." "[A]ppellants have not presented any experimental data showing that prior heat-shrinkable articles split. Due to the absence of tests comparing appellant’s heat shrinkable articles with those of the closest prior art, we conclude that appellant’s assertions of unexpected results constitute mere argument."). See also In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991).
II. ATTORNEY ARGUMENTS CANNOT TAKE THE PLACE OF EVIDENCE
The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.
See MPEP § 2145 generally for case law pertinent to the consideration of applicant’s rebuttal arguments.
III. OPINION EVIDENCE
Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application meets the requirements of 35 U.S.C. 112 is not entitled to any weight; however, facts supporting a basis for deciding that the specification complies with 35 U.S.C. 112 are entitled to some weight); In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, "some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him." 385 F.2d at 456, 155 USPQ at 524 (emphasis in original)).
In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, the interest of the expert in the outcome of the case, and the presence or absence of factual support for the expert’s opinion. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). See also In re Oelrich, 579 F.2d 86, 198 USPQ 210 (CCPA 1978) (factually based expert opinions on the level of ordinary skill in the art were sufficient to rebut the prima facie case of obviousness); Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989) (statement in publication dismissing the "preliminary identification of a human b-NGF-like molecule" in the prior art, even if considered to be an expert opinion, was inadequate to overcome the rejection based on that prior art because there was no factual evidence supporting the statement); In re Carroll, 601 F.2d 1184, 202 USPQ 571 (CCPA 1979) (expert opinion on what the prior art taught, supported by documentary evidence and formulated prior to the making of the claimed invention, received considerable deference); In re Beattie, 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992) (declarations of seven persons skilled in the art offering opinion evidence praising the merits of the claimed invention were found to have little value because of a lack of factual support); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991) (conclusory statements that results were "unexpected," unsupported by objective factual evidence, were considered but were not found to be of substantial evidentiary value).
Although an affidavit or declaration which states only conclusions may have some probative value, such an affidavit or declaration may have little weight when considered in light of all the evidence of record in the application. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).
An affidavit of an applicant as to the advantages of his or her claimed invention, while less persuasive than that of a disinterested person, cannot be disregarded for this reason alone. Ex parte Keyes, 214 USPQ 579 (Bd. App. 1982); In re McKenna, 203 F.2d 717, 97 USPQ 348 (CCPA 1953).
IV. PROBATIVE VALUE OF COMMERCIAL SUCCESS OR LONG FELT NEED EVIDENCE
Objective evidence of commercial success or long felt need and failure of others may be given less weight if the record shows that the applicant or patent owner has a strong market power or blocking patent depending on the facts of record. "A patent has been called a 'blocking patent' where practice of a later invention would infringe the earlier patent. The existence of such a blocking patent may deter non-owners and non-licensees from investing the resources needed to make, develop, and market such a later, 'blocked' invention, because of the risk of infringement liability and associated monetary or injunctive remedies. If the later invention is eventually patented by an owner or licensee of the blocking patent, that potential deterrent effect is relevant to understanding why others had not made, developed, or marketed that 'blocked' invention and, hence, to evaluating objective indicia of the obviousness of the later patent." Acorda Therapeutics, Inc. v. Roxane Lab., Inc., 903 F.3d 1310, 1337, 128 USPQ2d 1001, 1021(Fed. Cir. 2018). "Such a blocking patent therefore can be evidence that can discount the significance of evidence that nobody but the blocking patent’s owners or licensees arrived at, developed, and marketed the invention covered by the later patent at issue in litigation. But the magnitude of the diminution in incentive in any context—in particular, whether it was great enough to have actually deterred activity that otherwise would have occurred—is 'a fact-specific inquiry.'" Id. at 1339, 128 USPQ2d at 1022. While having record evidence of such a blocking patent may not be common, examiners should be aware of its potential impact in evaluating secondary evidence of nonobviousness. In any Office action, examiners should articulate why there is any discounting of the weight of the secondary consideration evidence when addressing the evidence.
716.01(d) Weighing Objective Evidence [R-08.2012]
IN MAKING A FINAL DETERMINATION OF PATENTABILITY, EVIDENCE SUPPORTING PATENTABILITY MUST BE WEIGHED AGAINST EVIDENCE SUPPORTING PRIMA FACIE CASE
When an applicant timely submits evidence traversing a rejection, the examiner must reconsider the patentability of the claimed invention. The ultimate determination of patentability must be based on consideration of the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The submission of objective evidence of patentability does not mandate a conclusion of patentability in and of itself. In re Chupp, 816 F.2d 643, 2 USPQ2d 1437 (Fed. Cir. 1987). Facts established by rebuttal evidence must be evaluated along with the facts on which the conclusion of a prima facie case was reached, not against the conclusion itself. In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). In other words, each piece of rebuttal evidence should not be evaluated for its ability to knockdown the prima facie case. All of the competent rebuttal evidence taken as a whole should be weighed against the evidence supporting the prima facie case. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 (1989); Richardson-Vicks, Inc., v. The Upjohn Co., 122 F.3d 1476, 1484, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997) (showing of unexpected results and commercial success of claimed ibuprofen and pseudoephedrine combination in single tablet form, while supported by substantial evidence, held not to overcome strong prima facie case of obviousness). See In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984) for a detailed discussion of the proper roles of the examiner’s prima facie case and applicant’s rebuttal evidence in the final determination of obviousness.
If, after evaluating the evidence, the examiner is still not convinced that the claimed invention is patentable, the next Office action should include a statement to that effect and identify the reason(s) (e.g., evidence of commercial success not convincing, the commercial success not related to the technology, etc.). See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert. denied, 488 U.S. 956 (1988). See also MPEP § 716.01. See MPEP § 2145 for guidance in determining whether rebuttal evidence is sufficient to overcome a prima facie case of obviousness.
716.02 Allegations of Unexpected Results [R-08.2012]
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA 1974), the court held that unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of "a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree." Compare In re Wagner, 371 F.2d 877, 884, 152 USPQ 552, 560 (CCPA 1967) (differences in properties cannot be disregarded on the ground they are differences in degree rather than in kind); Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) ("we generally consider a discussion of results in terms of ‘differences in degree’ as compared to ‘differences in kind’ . . . to have very little meaning in a relevant legal sense").
716.02(a) Evidence Must Show Unexpected Results [R-08.2012]
I. GREATER THAN EXPECTED RESULTS ARE EVIDENCE OF NONOBVIOUSNESS
"A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue." In re Corkill, 711 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985). In Corkhill, the claimed combination showed an additive result when a diminished result would have been expected. This result was persuasive of nonobviousness even though the result was equal to that of one component alone. Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of each of the effects taken separately (i.e., demonstrating "synergism"). Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). However, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) (Evidence showing greater than additive sweetness resulting from the claimed mixture of saccharin and L-aspartyl-L-phenylalanine was not sufficient to outweigh the evidence of obviousness because the teachings of the prior art lead to a general expectation of greater than additive sweetening effects when using mixtures of synthetic sweeteners.).
II. SUPERIORITY OF A PROPERTY SHARED WITH THE PRIOR ART IS EVIDENCE OF NONOBVIOUSNESS
Evidence of unobvious or unexpected advantageous properties, such as superiority in a property the claimed compound shares with the prior art, can rebut prima facie obviousness. "Evidence that a compound is unexpectedly superior in one of a spectrum of common properties . . . can be enough to rebut a prima facie case of obviousness." No set number of examples of superiority is required. In re Chupp, 816 F.2d 643, 646, 2 USPQ2d 1437, 1439 (Fed. Cir. 1987) (Evidence showing that the claimed herbicidal compound was more effective than the closest prior art compound in controlling quackgrass and yellow nutsedge weeds in corn and soybean crops was sufficient to overcome the rejection under 35 U.S.C. 103, even though the specification indicated the claimed compound was an average performer on crops other than corn and soybean.). See also Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (unexpected superior therapeutic activity of claimed compound against anaerobic bacteria was sufficient to rebut prima facie obviousness even though there was no evidence that the compound was effective against all bacteria).
III. PRESENCE OF AN UNEXPECTED PROPERTY IS EVIDENCE OF NONOBVIOUSNESS
Presence of a property not possessed by the prior art is evidence of nonobviousness. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (rejection of claims to compound structurally similar to the prior art compound was reversed because claimed compound unexpectedly possessed anti-inflammatory properties not possessed by the prior art compound); Ex parte Thumm, 132 USPQ 66 (Bd. App. 1961) (Appellant showed that the claimed range of ethylene diamine was effective for the purpose of producing "‘regenerated cellulose consisting substantially entirely of skin’" whereas the prior art warned "this compound has ‘practically no effect.’ "). The submission of evidence that a new product possesses unexpected properties does not necessarily require a conclusion that the claimed invention is nonobvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979). See the discussion of latent properties and additional advantages in MPEP § 2145.
IV. ABSENCE OF AN EXPECTED PROPERTY IS EVIDENCE OF NONOBVIOUSNESS
Absence of property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of unobviousness. Ex parte Mead Johnson & Co., 227 USPQ 78 (Bd. Pat. App. & Inter. 1985) (Based on prior art disclosures, claimed compounds would have been expected to possess beta-andrenergic blocking activity; the fact that claimed compounds did not possess such activity was an unexpected result sufficient to establish unobviousness within the meaning of 35 U.S.C. 103.).
716.02(b) Burden on Applicant [R-08.2012]
I. BURDEN ON APPLICANT TO ESTABLISH RESULTS ARE UNEXPECTED AND SIGNIFICANT
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP § 716.02(c).
II. APPLICANTS HAVE BURDEN OF EXPLAINING PROFFERED DATA
"[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
III. DIRECT AND INDIRECT COMPARATIVE TESTS ARE PROBATIVE OF NONOBVIOUSNESS
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). See In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974) and In re Fouche, 439 F.2d 1237, 1241-42, 169 USPQ 429, 433 (CCPA 1971) for examples of cases where indirect comparative testing was found sufficient to rebut a prima facie case of obviousness.
The patentability of an intermediate may be established by unexpected properties of an end product "when one of ordinary skill in the art would reasonably ascribe to a claimed intermediate the ‘contributing cause’ for such an unexpectedly superior activity or property." In re Magerlein, 602 F.2d 366, 373, 202 USPQ 473, 479 (CCPA 1979). "In order to establish that the claimed intermediate is a ‘contributing cause’ of the unexpectedly superior activity or property of an end product, an applicant must identify the cause of the unexpectedly superior activity or property (compared to the prior art) in the end product and establish a nexus for that cause between the intermediate and the end product." Id. at 479.
716.02(c) Weighing Evidence of Expected and Unexpected Results [R-08.2012]
I. EVIDENCE OF UNEXPECTED AND EXPECTED PROPERTIES MUST BE WEIGHED
Evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (Claims directed to a method of effecting analgesia without producing physical dependence by administering the levo isomer of a compound having a certain chemical structure were rejected as obvious over the prior art. Evidence that the compound was unexpectedly nonaddictive was sufficient to overcome the obviousness rejection. Although the compound also had the expected result of potent analgesia, there was evidence of record showing that the goal of research in this area was to produce an analgesic compound which was nonaddictive, enhancing the evidentiary value of the showing of nonaddictiveness as an indicia of nonobviousness.). See MPEP § 716.01(d) for guidance on weighing evidence submitted to traverse a rejection.
Where the unexpected properties of a claimed invention are not shown to have a significance equal to or greater than the expected properties, the evidence of unexpected properties may not be sufficient to rebut the evidence of obviousness. In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) (Claims were directed to a display/memory device which was prima facie obvious over the prior art. The court found that a higher memory margin and lower operating voltage would have been expected properties of the claimed device, and that a higher memory margin appears to be the most significant improvement for a memory device. Although applicant presented evidence of unexpected properties with regard to lower peak discharge current and higher luminous efficiency, these properties were not shown to have a significance equal to or greater than that of the expected higher memory margin and lower operating voltage. The court held the evidence of nonobviousness was not sufficient to rebut the evidence of obviousness.); In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (Evidence of improved feed efficiency in steers was not sufficient to rebut prima facie case of obviousness based on prior art which specifically taught the use of compound X537A to enhance weight gain in animals because the evidence did not show that a significant aspect of the claimed invention would have been unexpected.).
II. EXPECTED BENEFICIAL RESULTS ARE EVIDENCE OF OBVIOUSNESS
"Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967) (resultant decrease of dental enamel solubility accomplished by adding an acidic buffering agent to a fluoride containing dentifrice was expected based on the teaching of the prior art); Ex parte Blanc, 13 USPQ2d 1383 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a process of sterilizing a polyolefinic composition which contains an antioxidant with high-energy radiation. Although evidence was presented in appellant’s specification showing that particular antioxidants are effective, the Board concluded that these beneficial results would have been expected because one of the references taught a claimed antioxidant is very efficient and provides better results compared with other prior art antioxidants.).
716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012]
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
I. NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN CIRCUMSTANCES
The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (Claims directed to mixtures of an herbicide known as "FENAC" with a diphenyl ether herbicide in certain relative proportions were rejected as prima facie obvious. Applicant presented evidence alleging unexpected results testing three species of diphenyl ether herbicides over limited relative proportion ranges. The court held that the limited number of species exemplified did not provide an adequate basis for concluding that similar results would be obtained for the other diphenyl ether herbicides within the scope of the generic claims. Claims 6-8 recited a FENAC:diphenyl ether ratio of 1:1 to 4:1 for the three specific ethers tested. For two of the claimed ethers, unexpected results were demonstrated over a ratio of 16:1 to 2:1, and the effectiveness increased as the ratio approached the untested region of the claimed range. The court held these tests were commensurate in scope with the claims and supported the nonobviousness thereof. However, for a third ether, data was only provided over the range of 1:1 to 2:1 where the effectiveness decreased to the "expected level" as it approached the untested region. This evidence was not sufficient to overcome the obviousness rejection.); In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.").
II. DEMONSTRATING CRITICALITY OF A CLAIMED RANGE
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
716.02(e) Comparison With Closest Prior Art [R-08.2012]
An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential).
I. THE CLAIMED INVENTION MAY BE COMPARED WITH PRIOR ART THAT IS CLOSER THAN THAT APPLIED BY THE EXAMINER
Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner. In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961) (Claims to a 13-chloro substituted compound were rejected as obvious over nonchlorinated analogs of the claimed compound. Evidence showing unexpected results for the claimed compound as compared with the 9-, 12-, and 14- chloro derivatives of the compound rebutted the prima facie case of obviousness because the compounds compared against were closer to the claimed invention than the prior art relied upon.).
II. COMPARISONS WHEN THERE ARE TWO EQUALLY CLOSE PRIOR ART REFERENCES
Showing unexpected results over one of two equally close prior art references will not rebut prima facie obviousness unless the teachings of the prior art references are sufficiently similar to each other that the testing of one showing unexpected results would provide the same information as to the other. In re Johnson, 747 F.2d 1456, 1461, 223 USPQ 1260, 1264 (Fed. Cir. 1984) (Claimed compounds differed from the prior art either by the presence of a trifluoromethyl group instead of a chloride radical, or by the presence of an unsaturated ester group instead of a saturated ester group. Although applicant compared the claimed invention with the prior art compound containing a chloride radical, the court found this evidence insufficient to rebut the prima facie case of obviousness because the evidence did not show relative effectiveness over all compounds of the closest prior art. An applicant does not have to test all the compounds taught by each reference, "[h]owever, where an applicant tests less than all cited compounds, the test must be sufficient to permit a conclusion respecting the relative effectiveness of applicant’s claimed compounds and the compounds of the closest prior art." Id. (quoting In re Payne, 606 F.2d 303, 316, 203 USPQ 245, 256 (CCPA 1979)) (emphasis in original).).
III. THE CLAIMED INVENTION MAY BE COMPARED WITH THE CLOSEST SUBJECT MATTER THAT EXISTS IN THE PRIOR ART
Although evidence of unexpected results must compare the claimed invention with the closest prior art, applicant is not required to compare the claimed invention with subject matter that does not exist in the prior art. In re Geiger, 815 F.2d 686, 689, 2 USPQ2d 1276, 1279 (Fed. Cir. 1987) (Newman, J., concurring) (Evidence rebutted prima facie case by comparing claimed invention with the most relevant prior art. Note that the majority held the Office failed to establish a prima facie case of obviousness.); In re Chapman, 357 F.2d 418, 148 USPQ 711 (CCPA 1966) (Requiring applicant to compare claimed invention with polymer suggested by the combination of references relied upon in the rejection of the claimed invention under 35 U.S.C. 103 "would be requiring comparison of the results of the invention with the results of the invention." 357 F.2d at 422, 148 USPQ at 714.).
716.02(f) Advantages Disclosed or Inherent [R-08.2012]
The totality of the record must be considered when determining whether a claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made. Therefore, evidence and arguments directed to advantages not disclosed in the specification cannot be disregarded. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995) (Although the purported advantage of placement of a selective catalytic reduction catalyst in the bag retainer of an apparatus for controlling emissions was not disclosed in the specification, evidence and arguments rebutting the conclusion that such placement was a matter of "design choice" should have been considered as part of the totality of the record. "We have found no cases supporting the position that a patent applicant’s evidence or arguments traversing a § 103 rejection must be contained within the specification. There is no logical support for such a proposition as well, given that obviousness is determined by the totality of the record including, in some instances most significantly, the evidence and arguments proffered during the give-and-take of ex parte patent prosecution." 66 F.3d at 299, 36 USPQ2d at 1095.). See also In re Zenitz, 333 F.2d 924, 928, 142 USPQ 158, 161 (CCPA 1964) (evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as tranquilizer); Ex parte Sasajima, 212 USPQ 103, 104 - 05 (Bd. App. 1981) (evidence relating to initially undisclosed relative toxicity of claimed pharmaceutical compound must be considered).
The specification need not disclose proportions or values as critical for applicants to present evidence showing the proportions or values to be critical. In re Saunders, 444 F.2d 599, 607, 170 USPQ 213, 220 (CCPA 1971).
716.02(g) Declaration or Affidavit Form [R-08.2012]
"The reason for requiring evidence in declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 25 and 18 U.S.C. 1001." Permitting a publication to substitute for expert testimony would circumvent the guarantees built into the statute. Ex parte Gray, 10 USPQ2d 1922, 1928 (Bd. Pat. App. & Inter. 1989). Publications may, however, be evidence of the facts in issue and should be considered to the extent that they are probative.
716.03 Commercial Success [R-08.2012]
I. NEXUS BETWEEN CLAIMED INVENTION AND EVIDENCE OF COMMERCIAL SUCCESS REQUIRED
An applicant who is asserting commercial success to support its contention of nonobviousness bears the burden of proof of establishing a nexus between the claimed invention and evidence of commercial success.
The Federal Circuit has acknowledged that applicant bears the burden of establishing nexus, stating:
In the ex parte process of examining a patent application, however, the PTO lacks the means or resources to gather evidence which supports or refutes the applicant’s assertion that the sale constitute commercial success. C.f. Ex parte Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. & Int. 1990)(evidentiary routine of shifting burdens in civil proceedings inappropriate in ex parte prosecution proceedings because examiner has no available means for adducing evidence). Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success.
In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996). See also In re GPAC, 57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) (Evidence of commercial success of articles not covered by the claims subject to the 35 U.S.C. 103 rejection was not probative of nonobviousness).
The term "nexus" designates a factually and legally sufficient connection between the evidence of commercial success and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988).
II. COMMERCIAL SUCCESS ABROAD IS RELEVANT
Commercial success abroad, as well as in the United States, is relevant in resolving the issue of nonobviousness. Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 221 USPQ 481 (Fed. Cir. 1984).
716.03(a) Commercial Success Commensurate in Scope With Claimed Invention [R-08.2012]
I. EVIDENCE OF COMMERCIAL SUCCESS MUST BE COMMENSURATE IN SCOPE WITH THE CLAIMS
Objective evidence of nonobviousness including commercial success must be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791, 171 USPQ 294 (CCPA 1971) (evidence showing commercial success of thermoplastic foam "cups" used in vending machines was not commensurate in scope with claims directed to thermoplastic foam "containers" broadly). In order to be commensurate in scope with the claims, the commercial success must be due to claimed features, and not due to unclaimed features. Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229, 17 USPQ2d 1257, 1260 (D.D.C. 1990), aff’d, 959 F.2d 226, 228, 22 USPQ2d 1153, 1156 (Fed. Cir. 1992) (Features responsible for commercial success were recited only in allowed dependent claims, and therefore the evidence of commercial success was not commensurate in scope with the broad claims at issue.).
An affidavit or declaration attributing commercial success to a product or process "constructed according to the disclosure and claims of [the] patent application" or other equivalent language does not establish a nexus between the claimed invention and the commercial success because there is no evidence that the product or process which has been sold corresponds to the claimed invention, or that whatever commercial success may have occurred is attributable to the product or process defined by the claims. Ex parte Standish, 10 USPQ2d 1454, 1458 (Bd. Pat. App. & Inter. 1988).
II. REQUIREMENTS WHEN CLAIMED INVENTION IS NOT COEXTENSIVE WITH COMMERCIAL PRODUCT OR PROCESS
If a particular range is claimed, applicant does not need to show commercial success at every point in the range. "Where, as here, the claims are directed to a combination of ranges and procedures not shown by the prior art, and where substantial commercial success is achieved at an apparently typical point within those ranges, and the affidavits definitely indicate that operation throughout the claimed ranges approximates that at the particular points involved in the commercial operation, we think the evidence as to commercial success is persuasive." In re Hollingsworth, 253 F.2d 238, 240, 117 USPQ 182, 184 (CCPA 1958). See also Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988) (where the commercially successful product or process is not coextensive with the claimed invention, applicant must show a legally sufficient relationship between the claimed feature and the commercial product or process).
716.03(b) Commercial Success Derived From Claimed Invention [R-08.2017]
I. COMMERCIAL SUCCESS MUST BE DERIVED FROM THE CLAIMED INVENTION
In considering evidence of commercial success, care should be taken to determine that the commercial success alleged is directly derived from the invention claimed, in a marketplace where the consumer is free to choose on the basis of objective principles, and that such success is not the result of heavy promotion or advertising, shift in advertising, consumption by purchasers normally tied to applicant or assignee, or other business events extraneous to the merits of the claimed invention, etc. In re Mageli, 470 F.2d 1380, 176 USPQ 305 (CCPA 1973) (conclusory statements or opinions that increased sales were due to the merits of the invention are entitled to little weight); In re Noznick, 478 F.2d 1260, 178 USPQ 43 (CCPA 1973).
In ex parte proceedings before the Patent and Trademark Office, an applicant must show that the claimed features were responsible for the commercial success of an article if the evidence of nonobviousness is to be accorded substantial weight. See In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1690 (Fed. Cir. 1996) (Inventor’s opinion as to the purchaser’s reason for buying the product is insufficient to demonstrate a nexus between the sales and the claimed invention.). Merely showing that there was commercial success of an article which embodied the invention is not sufficient. Ex parte Remark, 15 USPQ2d 1498, 1502-02 (Bd. Pat. App. & Inter. 1990). Compare Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988) (In civil litigation, a patentee does not have to prove that the commercial success is not due to other factors. "A requirement for proof of the negative of all imaginable contributing factors would be unfairly burdensome, and contrary to the ordinary rules of evidence.").
See also Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985) (commercial success may have been attributable to extensive advertising and position as a market leader before the introduction of the patented product); In re Fielder, 471 F.2d 690, 176 USPQ 300 (CCPA 1973) (success of invention could be due to recent changes in related technology or consumer demand; here success of claimed voting ballot could be due to the contemporary drive toward greater use of automated data processing techniques); EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985) (evidence of licensing is a secondary consideration which must be carefully appraised as to its evidentiary value because licensing programs may succeed for reasons unrelated to the unobviousness of the product or process, e.g., license is mutually beneficial or less expensive than defending infringement suits); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986) (Evidence of commercial success supported a conclusion of nonobviousness of claims to an immunometric "sandwich" assay with monoclonal antibodies. Patentee’s assays became a market leader with 25% of the market within a few years. Evidence of advertising did not show absence of a nexus between commercial success and the merits of the claimed invention because spending 25-35% of sales on marketing was not inordinate (mature companies spent 17-32% of sales in this market), and advertising served primarily to make industry aware of the product because this is not kind of merchandise that can be sold by advertising hyperbole.).
II. COMMERCIAL SUCCESS MUST FLOW FROM THE FUNCTIONS AND ADVANTAGES DISCLOSED OR INHERENT IN THE SPECIFICATION DESCRIPTION
To be pertinent to the issue of nonobviousness, the commercial success of devices falling within the claims of the patent must flow from the functions and advantages disclosed or inherent in the description in the specification. Furthermore, the success of an embodiment within the claims may not be attributable to improvements or modifications made by others. In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985). See also Merck & Cie v. Gnosis S.P.A., 808 F.3d 829, 833, 117 USPQ2d 1393, 1399 (Fed Cir. 2015), cert. denied, 137 S. Ct. 297 (2016) (commercial success resulted from a "unique combination" of ingredients, a synergistic interaction of components, or a specific combination of specific forms of B-vitamins and other active ingredients, rather than from the claimed method of "using L-5-MTHF and ‘at least one B-vitamin’").
III. IN DESIGN CASES, ESTABLISHMENT OF NEXUS IS ESPECIALLY DIFFICULT
Establishing a nexus between commercial success and the claimed invention is especially difficult in design cases. Evidence of commercial success must be clearly attributable to the design to be of probative value, and not to brand name recognition, improved performance, or some other factor. Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984) (showing of commercial success was not accompanied by evidence attributing commercial success of Litton microwave oven to the design thereof).
IV. SALES FIGURES MUST BE ADEQUATELY DEFINED
Gross sales figures do not show commercial success absent evidence as to market share, Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985), or as to the time period during which the product was sold, or as to what sales would normally be expected in the market, Ex parte Standish, 10 USPQ2d 1454 (Bd. Pat. App. & Inter. 1988).
716.04 Long-Felt Need and Failure of Others [R-08.2012]
I. THE CLAIMED INVENTION MUST SATISFY A LONG-FELT NEED WHICH WAS RECOGNIZED, PERSISTENT, AND NOT SOLVED BY OTHERS
Establishing long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution. The relevance of long-felt need and the failure of others to the issue of obviousness depends on several factors. First, the need must have been a persistent one that was recognized by those of ordinary skill in the art. In re Gershon, 372 F.2d 535, 539, 152 USPQ 602, 605 (CCPA 1967) ("Since the alleged problem in this case was first recognized by appellants, and others apparently have not yet become aware of its existence, it goes without saying that there could not possibly be any evidence of either a long felt need in the . . . art for a solution to a problem of dubious existence or failure of others skilled in the art who unsuccessfully attempted to solve a problem of which they were not aware."); Orthopedic Equipment Co., Inc. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983) (Although the claimed invention achieved the desirable result of reducing inventories, there was no evidence of any prior unsuccessful attempts to do so.).
Second, the long-felt need must not have been satisfied by another before the invention by applicant. Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988) (Although at one time there was a long-felt need for a "do-it-yourself" window shade material which was adjustable without the use of tools, a prior art product fulfilled the need by using a scored plastic material which could be torn. "[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved".)
Third, the invention must in fact satisfy the long-felt need. In re Cavanagh, 436 F.2d 491, 168 USPQ 466 (CCPA 1971).
II. LONG-FELT NEED IS MEASURED FROM THE DATE A PROBLEM IS IDENTIFIED AND EFFORTS ARE MADE TO SOLVE IT
Long-felt need is analyzed as of the date the problem is identified and articulated, and there is evidence of efforts to solve that problem, not as of the date of the most pertinent prior art references. Texas Instruments Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 1179, 26 USPQ2d 1018, 1029 (Fed. Cir. 1993).
III. OTHER FACTORS CONTRIBUTING TO THE PRESENCE OF A LONG-FELT NEED MUST BE CONSIDERED
The failure to solve a long-felt need may be due to factors such as lack of interest or lack of appreciation of an invention’s potential or marketability rather than want of technical know-how. Scully Signal Co. v. Electronics Corp. of America, 570 F.2d 355, 196 USPQ 657 (1st. Cir. 1977).
See also Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 698, 218 USPQ 865, 869 (Fed. Cir. 1983) (presence of legislative regulations for controlling sulfur dioxide emissions did not militate against existence of long-felt need to reduce the sulfur content in the air); In re Tiffin, 443 F.2d 344, 170 USPQ 88 (CCPA 1971) (fact that affidavit supporting contention of fulfillment of a long-felt need was sworn by a licensee adds to the weight to be accorded the affidavit, as long as there is a bona fide licensing agreement entered into at arm’s length).
716.05 Skepticism of Experts [R-08.2012]
"Expressions of disbelief by experts constitute strong evidence of nonobviousness." Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 698, 218 USPQ 865, 869 (Fed. Cir. 1983) (citing United States v. Adams, 383 U.S. 39, 52, 148 USPQ 479, 483-484 (1966)) (The patented process converted all the sulfur compounds in a certain effluent gas stream to hydrogen sulfide, and thereafter treated the resulting effluent for removal of hydrogen sulfide. Before learning of the patented process, chemical experts, aware of earlier failed efforts to reduce the sulfur content of effluent gas streams, were of the opinion that reducing sulfur compounds to hydrogen sulfide would not adequately solve the problem.).
"The skepticism of an expert, expressed before these inventors proved him wrong, is entitled to fair evidentiary weight, . . . as are the five to six years of research that preceded the claimed invention." In re Dow Chemical Co., 837 F.2d 469, 5 USPQ2d 1529 (Fed. Cir. 1988); Burlington Industries Inc. v. Quigg, 822 F.2d 1581, 3 USPQ2d 1436 (Fed. Cir. 1987) (testimony that the invention met with initial incredulity and skepticism of experts was sufficient to rebut the prima facie case of obviousness based on the prior art).
716.06 Copying [R-08.2012]
Another form of secondary evidence which may be presented by applicants during prosecution of an application, but which is more often presented during litigation, is evidence that competitors in the marketplace are copying the invention instead of using the prior art. However, more than the mere fact of copying is necessary to make that action significant because copying may be attributable to other factors such as a lack of concern for patent property or contempt for the patentee’s ability to enforce the patent. Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985). Evidence of copying was persuasive of nonobviousness when an alleged infringer tried for a substantial length of time to design a product or process similar to the claimed invention, but failed and then copied the claimed invention instead. Dow Chem. Co. v. American Cyanamid Co., 816 F.2d 617, 2 USPQ2d 1350 (Fed. Cir. 1987). Alleged copying is not persuasive of nonobviousness when the copy is not identical to the claimed product, and the other manufacturer had not expended great effort to develop its own solution. Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985). See also Vandenberg v. Dairy Equipment Co., 740 F.2d 1560, 1568, 224 USPQ 195, 199 (Fed. Cir. 1984) (evidence of copying not found persuasive of nonobviousness) and Panduit Corp. v. Dennison Manufacturing Co., 774 F.2d 1082, 1098-99, 227 USPQ 337, 348, 349 (Fed. Cir. 1985), vacated on other grounds, 475 U.S. 809, 229 USPQ 478 (1986), on remand, 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987) (evidence of copying found persuasive of nonobviousness where admitted infringer failed to satisfactorily produce a solution after 10 years of effort and expense).
716.07 Inoperability of References [R-08.2012]
Since every patent is presumed valid (35 U.S.C. 282 ), and since that presumption includes the presumption of operability (Metropolitan Eng. Co. v. Coe, 78 F.2d 199, 25 USPQ 216 (D.C. Cir. 1935), examiners should not express any opinion on the operability of a patent. Affidavits or declarations attacking the operability of a patent cited as a reference must rebut the presumption of operability by a preponderance of the evidence. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980).
Further, since in a patent it is presumed that a process if used by one skilled in the art will produce the product or result described therein, such presumption is not overcome by a mere showing that it is possible to operate within the disclosure without obtaining the alleged product. In re Weber, 405 F.2d 1403, 160 USPQ 549 (CCPA 1969). It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker. The failures of experimenters who have no interest in succeeding should not be accorded great weight. In re Michalek, 162 F.2d 229, 74 USPQ 107 (CCPA 1947); In re Reid, 179 F.2d 998, 84 USPQ 478 (CCPA 1950).
Where the affidavit or declaration presented asserts inoperability in features of the reference which are not relied upon, the reference is still effective as to other features which are operative. In re Shepherd, 172 F.2d 560, 80 USPQ 495 (CCPA 1949).
Where the affidavit or declaration presented asserts that the reference relied upon is inoperative, the claims represented by applicant must distinguish from the alleged inoperative reference disclosure. In re Crosby, 157 F.2d 198, 71 USPQ 73 (CCPA 1946). See also In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (lack of diagrams, flow charts, and other details in the prior art references did not render them nonenabling in view of the fact that applicant’s own specification failed to provide such detailed information, and that one skilled in the art would have known how to implement the features of the references).
If a patent teaches or suggests the claimed invention, an affidavit or declaration by patentee that he or she did not intend the disclosed invention to be used as claimed by applicant is immaterial. In re Pio, 217 F.2d 956, 104 USPQ 177 (CCPA 1954). Compare In re Yale, 434 F.2d 66, 168 USPQ 46 (CCPA 1970) (Correspondence from a co-author of a literature article confirming that the article misidentified a compound through a typographical error that would have been obvious to one of ordinary skill in the art was persuasive evidence that the erroneously typed compound was not put in the possession of the public.).
716.08 Utility and Operability of Applicant’s Disclosure [R-08.2012]
See MPEP § 2107.02, for guidance on when it is proper to require evidence of utility or operativeness, and how to evaluate any evidence which is submitted to overcome a rejection under 35 U.S.C. 101 for lack of utility. See MPEP § 2107 - § 2107.03 generally for utility examination guidelines and an overview of legal precedent relevant to the utility requirement of 35 U.S.C. 101.
716.09 Sufficiency of Disclosure [R-11.2013]
See MPEP § 2164 - § 2164.08(c) for guidance in determining whether the specification provides an enabling disclosure in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
Once the examiner has established a prima facie case of lack of enablement, the burden falls on the applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would have been able to make and use the claimed invention using the disclosure as a guide. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973). Evidence to supplement a specification which on its face appears deficient under 35 U.S.C. 112 must establish that the information which must be read into the specification to make it complete would have been known to those of ordinary skill in the art. In re Howarth, 654 F.2d 103, 210 USPQ 689 (CCPA 1981) (copies of patent specifications which had been opened for inspection in Rhodesia, Panama, and Luxembourg prior to the U.S. filing date of the applicant were not sufficient to overcome a rejection for lack of enablement under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph).
Affidavits or declarations presented to show that the disclosure of an application is sufficient to one skilled in the art are not acceptable to establish facts which the specification itself should recite. In re Buchner, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991) (Expert described how he would construct elements necessary to the claimed invention whose construction was not described in the application or the prior art; this was not sufficient to demonstrate that such construction was well-known to those of ordinary skill in the art.); In re Smyth, 189 F.2d 982, 90 USPQ 106 (CCPA 1951).
Affidavits or declarations purporting to explain the disclosure or to interpret the disclosure of a pending application are usually not considered. In re Oppenauer, 143 F.2d 974, 62 USPQ 297 (CCPA 1944). But see Glaser v. Strickland, 220 USPQ 446 (Bd. Pat. Int. 1983) which reexamines the rationale on which In re Oppenauer was based in light of the Federal Rules of Evidence. The Board stated as a general proposition "Opinion testimony which merely purports to state that a claim or count, is ‘disclosed’ in an application involved in an interference . . . should not be given any weight. Opinion testimony which purports to state that a particular feature or limitation of a claim or count is disclosed in an application involved in an interference and which explains the underlying factual basis for the opinion may be helpful and can be admitted. The weight to which the latter testimony may be entitled must be evaluated strictly on a case-by-case basis."
716.10 Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103 [R-10.2019]
[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. "Derivation" or "derived" as used in the discussion below is in the context of pre-AIA law. "Derivation proceedings" as created in the AIA are discussed in MPEP § 2310 et seq.]
Under certain circumstances an affidavit or declaration may be submitted which attempts to attribute an activity, a reference or part of a reference to the inventor or at least one joint inventor to overcome a rejection based on pre-AIA 35 U.S.C. 102 prior art. If successful, the activity or the reference is no longer applicable. When subject matter, disclosed in a patent or patent application (reference) naming an inventive entity including inventor S and another joint inventor is claimed in a later application naming inventor S without the joint inventor, the joint patent or joint patent application publication is a valid reference available as prior art under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or declaration under 37 CFR 1.131(a) showing prior invention (see MPEP § 715) or by an affidavit or declaration under 37 CFR 1.132. An unequivocal declaration under 37 CFR 1.132 by S 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 has been sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982)(declaration corroborated by attached drawing). Depending on the situation, documentation created contemporaneously with the conception/invention and/or declarations/affidavits by the other inventor(s) named in the reference may be used to corroborate inventorship. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination, a declaration under 37 CFR 1.132 must also explain the presence of the additional inventor in the reference (e.g., the disclosure in claim 1 of the reference is relied upon to reject the claims; the affidavit or declaration explains that S is the sole inventor of claim 1, and the additional inventor and S are joint inventors of claim 2 of the reference). Testimony or disclaimer by the other inventor named in the reference is usually not required but, if submitted, should be considered by the examiner.
Note 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 a different inventive entity which claims interfering subject matter as defined in 37 CFR 41.203(a). See MPEP § 715.05.
For applications subject to current 35 U.S.C. 102, see MPEP §§ 717, 2153 and 2154.
Where there is a published article identifying the authorship (MPEP § 715.01(c)) or a patent or an application publication identifying the inventorship (MPEP § 715.01(a)) that discloses subject matter being claimed in an application undergoing examination, the designation of authorship or inventorship does not raise a presumption of inventorship with respect to the subject matter disclosed in the article or with respect to the subject matter disclosed but not claimed in the patent or published application so as to justify a rejection under pre-AIA 35 U.S.C. 102(f).
However, it is incumbent upon the applicant in the application, in response to an inquiry regarding the appropriate inventorship under pre-AIA 35 U.S.C. 102(f) or to rebut a rejection under pre-AIA 35 U.S.C. 102(a) or (e), to provide a satisfactory showing by way of affidavit or declaration under 37 CFR 1.132 that the inventorship of the application is correct in that the reference discloses subject matter derived from the inventor or at least one joint inventor of the application undergoing examination rather than invented by the author, patentee, or applicant of the published application notwithstanding the authorship of the article or the inventorship of the patent or published application. In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982) (inquiry is appropriate to clarify any ambiguity created by an article regarding inventorship and it is then incumbent upon the applicant to provide "a satisfactory showing that would lead to a reasonable conclusion that [inventor or at least one joint inventor] is the ... inventor" of the subject matter disclosed in the article and claimed in the application).
An uncontradicted "unequivocal statement" from an inventor or joint inventor regarding the subject matter disclosed in an article, patent, or published application has been accepted as establishing inventorship. In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)(declaration corroborated by attached drawing). Depending on the situation, documentation created contemporaneously with the conception/invention and/or declarations/affidavits by the other inventor(s) named in the reference may be used to corroborate inventorship. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). When additional documentary evidence contradicts statements made by the inventor or at least one joint inventor with respect to inventorship, it may be appropriate to maintain the rejection(s). Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (a rejection under pre-AIA 35 U.S.C. 102(f) was affirmed notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a nonapplicant author submitting a letter declaring the author’s inventorship); In re Carreira, 532 F.2d 1356, 189 USPQ 461 (CCPA 1976) (disclaiming declarations from patentees were directed at the generic invention and not at the claimed species, hence no need to consider derivation of the subject matter).
A successful 37 CFR 1.132 affidavit or declaration establishing derivation by the author, patentee, or applicant of the published application of a first reference does not enable an applicant to step into the shoes of that author, patentee, or applicant of the published application in regard to its date of publication so as to defeat a later second reference. In re Costello, 717 F.2d 1346, 1350, 219 USPQ 389, 392 (Fed. Cir. 1983).
Affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102 are affidavits or declarations under 37 CFR 1.132 because these are not otherwise provided for in the rules of practice. The Office will treat affidavits or declarations of attribution for applications subject to the current 35 U.S.C. 102 as affidavits or declarations under 37 CFR 1.130, and affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102 as affidavits or declarations under 37 CFR 1.132, regardless of whether the affidavit or declaration is designated as an affidavit or declaration under 37 CFR 1.130, 1.131, or 37 CFR 1.132.
EXAMPLES
The following examples demonstrate the application of an attribution affidavit or declaration.
During the search the examiner finds a reference fully describing the claimed invention. The authorship or inventive entity of the reference is the same as the inventive entity of the application and the reference was published or patented less than one year prior to the filing date of the application. The reference cannot be used against applicant because it does not satisfy the 1-year time requirement of pre-AIA 35 U.S.C. 102(b).
Same facts as above, but the authorship or inventive entity of the reference is different from the inventive entity of the application. Because the inventive entities are different, the reference is prior art under pre-AIA 35 U.S.C. 102(a) or (e).
In the situation described in Example 2, an affidavit under 37 CFR 1.132 may be submitted to show that the relevant portions of the reference originated with or were obtained from the inventor or at least one joint inventor named in the application undergoing examination. Thus the affidavit attempts to convert the fact situation from that described in Example 2 to the situation described in Example 1.
717 Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 715 et seq. for affidavits or declarations under 37 CFR 1.131(a), MPEP § 718 for affidavits or declarations under 37 CFR 1.131(c), and MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
35 U.S.C. 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) with respect to the claimed invention if: (1) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
35 U.S.C. 102(b)(2)(A) and (B) provide that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if: (1) The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
The Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish that a disclosure made no earlier than one year before the effective filing date of the claimed invention is not prior art under 35 U.S.C. 102(a) due to an exception in 35 U.S.C. 102(b). See MPEP § 717.01 et seq. for more information on declarations filed under 37 CFR 1.130.
Additionally, 35 U.S.C. 102(b)(2)(C) provides that a disclosure made in a U.S. patent, U.S. patent application publication, or WIPO published application shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person. This provision replaces the exception in pre-AIA 35 U.S.C. 103(c) that applied only in the context of an obviousness analysis under 35 U.S.C. 103 to prior art that was commonly owned at the time the claimed invention was made, and which qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). Thus, the AIA provides that certain prior patents and published patent applications of co-workers and collaborators are not prior art either for purposes of determining novelty (35 U.S.C. 102 ) or nonobviousness (35 U.S.C. 103 ). See MPEP § 717.02 et seq. for more information on the prior art exclusion under 35 U.S.C. 102(b)(2)(C).
The AIA does not define the term "disclosure," and 35 U.S.C. 102(a) does not use the term "disclosure." 35 U.S.C. 102(b)(1) and 102(b)(2), however, each state conditions under which a "disclosure" that otherwise falls within 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under 35 U.S.C. 102(a)(1) or 102(a)(2). Thus, the Office is treating the term "disclosure" as a generic expression intended to encompass the documents and activities enumerated in 35 U.S.C. 102(a) (i.e., being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application).
For more information on the provisions of 35 U.S.C. 102 in general, see MPEP § 2150 et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(1), see MPEP § 2153 et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(2), see MPEP § 2154.02 et seq.
717.01 Affidavit or Declaration Under 37 CFR 1.130 [R-10.2019]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 715 et seq. for affidavits or declarations under 37 CFR 1.131(a), MPEP § 718 for affidavits or declarations under 37 CFR 1.131(c), and MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
37 C.F.R. 1.130 Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act.
- (a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
- (b) Affidavit or declaration of prior public disclosure. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. An affidavit or declaration under this paragraph must identify the subject matter publicly disclosed and provide the date such subject matter was publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
- (1) If the subject matter publicly disclosed on that date was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.
- (2) If the subject matter publicly disclosed on that date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
- (c) When this section is not available. The provisions of this section are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. The provisions of this section may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or a patent owner may file a petition for a derivation proceeding pursuant to § 42.401 et seq. of this title
- (d) Applications and patents to which this section is applicable. The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
- (1) A claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013; or
- (2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013.
*****
37 CFR 1.130 provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art in accordance with 35 U.S.C. 102(b). In other words, 37 CFR 1.130, like 37 CFR 1.131 and 37 CFR 1.132, provides a mechanism for the submission of evidence to disqualify a disclosure as prior art or otherwise traverse a rejection. An applicant’s or patent owner’s compliance with 37 CFR 1.130 means that the applicant or patent owner is entitled to have the evidence considered in determining the patentability of the claim(s) at issue. It does not mean that the applicant or patent owner is entitled as a matter of right to have the rejection of, or objection to, the claim(s) withdrawn. See Changes To Implement the Patent Business Goals, 65 FR 54604, 54640 (Sept. 8, 2000) (discussing procedural nature of 37 CFR 1.131 and 37 CFR 1.132 ).
37 CFR 1.130(a) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(a) pertains to the provisions of subparagraph (A) of 35 U.S.C. 102(b)(1) and 102(b)(2).
37 CFR 1.130(b) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(b) pertains to the provisions of subparagraph (B) of 35 U.S.C. 102(b)(1) and 102(b)(2).
37 CFR 1.130(c) provides that the provisions of 37 CFR 1.130 are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of the claimed invention is prior art under 35 U.S.C. 102(a)(1) and does not meet the requirements for exception under 35 U.S.C. 102(b)(1).
37 CFR 1.130(d) provides that the provisions of 37 CFR 1.130 apply to any application for patent, and to any patent issuing thereon, that is subject to 35 U.S.C. 102 and 103.
I. SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS CAN BE USED
Affidavits or declarations under 37 CFR 1.130 may be used, for example:
- (A) When a claim is under a prior art rejection, to show a disclosure (e.g., reference, activity, or portion thereof) that is relied upon as prior art under 35 U.S.C. 102(a)(1) or (2) is eligible to be excepted under 35 U.S.C. 102(b)(1) or (2) by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor, subject to certain restrictions, as discussed below in subsection II.
- (B) When a claim is under a prior art rejection, to show a disclosure (e.g., reference, activity, or portion thereof) that is relied upon as prior art under 35 U.S.C. 102(a)(1) or (2) is eligible to be excepted under 35 U.S.C. 102(b)(1) or (2) by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, subject to certain restrictions, as discussed below in subsection II.
If effective, the showing that the disclosure is not prior art under 35 U.S.C. 102(a) will make the disclosure unavailable to be applied in a rejection under either 35 U.S.C. 102(a) or 35 U.S.C. 103. For example, an applicant or patent owner may overcome a 35 U.S.C. 103 rejection based on a combination of references by showing that the subject matter disclosed in only one of the references (or portion thereof) applied in the rejection is not prior art. The U.S. patents or U.S. patent application publications may continue to be applied under the judicially created doctrine of nonstatutory double patenting, statutory double patenting and may serve as evidence of the level of ordinary skill or evidence relevant to an enablement inquiry.
II. SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE
An affidavit or declaration under 37 CFR 1.130 is not appropriate in the following situations:
- (A) When the disclosure that is applied in a rejection is:
- (1) a U.S. patent or U.S. patent application publication that
- (a) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and
- (b) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent under examination.
In this case, an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401 et seq.
- (1) a U.S. patent or U.S. patent application publication that
- The provisions of 37 CFR 1.130, however, would be available if:
- (1) The rejection is based upon a disclosure other than a U.S. patent or U.S. patent application publication (such as non-patent literature or a foreign patent document);
- (2) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application did not claim an invention that is the same or substantially the same as the applicant’s claimed invention; or
- (3) the rejection is based upon a U.S. patent or U.S. patent application and while the patent or pending application does claim an invention that is the same or substantially the same as the applicant’s claimed invention, the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent under examination (e.g., an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation, the affidavit or declaration under 37 CFR 1.130 contends that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor).
- (B) If the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of the claimed invention is prior art under 35 U.S.C. 102(a)(1) and may not be excepted under 35 U.S.C. 102(b)(1). Note that the provisions of 37 CFR 1.130 are available to overcome a rejection under 35 U.S.C. 102(a)(2) which is based on subject matter in an application or patent that was effectively filed, but not published or made publicly available, more than one year before the effective filing date of the claimed invention under examination, where the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. See also, MPEP § 2155.06.
III. SITUATIONS WHERE 37 CFR 1.130(a) AFFIDAVITS OR DECLARATIONS ARE NOT REQUIRED
- (A) A declaration under 37 CFR 1.130(a) is not required when a public disclosure, subject to the exceptions of 35 U.S.C. 102(b)(1)(A), is by one or more joint inventor(s) or the entire inventive entity of the application under examination and does not name anyone else. For example, if an application names A, B, and C as the inventive entity, a journal publication names as authors A and B, and the publication date is one year or less before the effective filing date of the claimed invention, then the publication should not be applied in a prior art rejection because it is apparent that the disclosure is a grace period disclosure. Where a disclosure involves a patent document, a declaration under 37 CFR 1.130(a) is not required where the inventive entity of the patent document, subject to the exceptions of 35 U.S.C. 102(b)(1)(A), only includes one or more joint inventor(s) or the entire inventive entity of the application under examination. For example, if the application names A, B, and C as the inventive entity, the patent document names A and B as the inventive entity, and the public availability date of the patent document is one year or less before the effective filing date of the claimed invention under examination, then the patent document should not be applied in a prior art rejection under 35 U.S.C. 102(a)(1) because it is apparent that the patent document disclosure is a grace period disclosure.
- (B) A declaration under 37 CFR 1.130(a) is not required when the inventive entity of a U.S. patent, U.S. patent application publication, or a WIPO publication that designates the United States, subject to the exceptions of 35 U.S.C. 102(b)(2)(A), only includes one or more joint inventor(s), but not the entire inventive entity, of the application under examination. For example, if the application under examination names as the inventive entity A, B, and C, and the 35 U.S.C. 102(a)(2) reference names A and B as the inventive entity, then the reference should not be applied in a prior art rejection because it is apparent that the subject matter disclosed was obtained from one or more members of the inventive entity, either directly or indirectly. The exceptions under 35 U.S.C. 102(b)(1)(A) and 35 U.S.C. 102(b)(2)(A) both have to do with disclosures of material that originated with the inventor or a joint inventor. However, the 35 U.S.C. 102(b)(2)(A) exception is not limited to the grace period.
- (C) A declaration under 37 CFR 1.130(a) is not required if the specification of the application under examination identifies the disclosure or the subject matter disclosed that is subject to the exceptions of 35 U.S.C. 102(b)(1)(A) or 35 U.S.C. 102(b)(2)(A) as having been made by or having originated from one or more members of the inventive entity of the application under examination. See 37 CFR 1.77(b)(6) and MPEP § 2153.01(a).
IV. PRIOR ART DATE OF THE DISCLOSURE UNDER AIA 35 U.S.C. 102(a)
For determining the prior art date of a disclosure under AIA 35 U.S.C. 102(a)(1), see MPEP § 2152.02(a) et seq.
For determining the prior art date of a disclosure under AIA 35 U.S.C. 102(a)(2), see MPEP § 2154.01 et seq.
V. FORM PARAGRAPHS
¶ 7.67.aia Affidavit or Declaration Under 37 CFR 1.130: Effective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)
The [1] under 37 CFR 1.130 [2] filed on [3] is sufficient to overcome the rejection of claim [4] based on [5]. [6]
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. In bracket 1, insert either --affidavit-- or --declaration--.
3. In bracket 2, insert either --(a)-- or --(b)--.
4. In bracket 3, insert the filing date of the affidavit or declaration
5. In bracket 4, insert the affected claim or claims.
6. In bracket 5, insert the specific reference applied under 35 U.S.C. 102 or 103 that the affidavit or declaration has disqualified as prior art.
7. In bracket 6, insert the explanation of how the affidavit/declaration provides evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1) or 102(b)(2).
¶ 7.68.aia Affidavit or Declaration Under 37 CFR 1.130: Ineffective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)
The [1] under 37 CFR 1.130 [2] filed [3] is insufficient to overcome the rejection of claim [4] based upon [5] as set forth in the last Office action because [6]:
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia .
2. In bracket 1, insert either --affidavit-- or --declaration--.
3. In bracket 2, insert either --(a)-- or --(b)--.
4. In bracket 3, insert the filing date of the affidavit or declaration.
5. In bracket 4, insert the affected claim or claims.
6. In bracket 5, insert the rejection that has not been overcome, including statutory grounds.
7. In bracket 6, insert the explanation of how the affidavit or declaration fails to provide evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1) or 102(b)(2).
717.01(a) Declarations or Affidavits under 37 CFR 1.130(a) – Attribution [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
37 CFR 1.130(a) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(a) pertains to the provisions of subparagraph (A) of 35 U.S.C. 102(b)(1) ) and 102(b)(2). 35 U.S.C. 102(b)(1)(A) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under 35 U.S.C. 102(a)(1) if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, and 35 U.S.C. 102(b)(2)(A) provides that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
717.01(a)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) [R-10.2019]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
In making a submission under 37 CFR 1.130(a), the applicant or patent owner is attempting to show that: (1) the disclosure was made by the inventor or a joint inventor; or (2) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. In other words, the affidavits or declarations are seeking to attribute an activity, a reference, or part of a reference to the inventor(s) to show that the disclosure is not available as prior art under 35 U.S.C. 102(a). Such declarations or affidavits will be similar to affidavits or declarations under 37 CFR 1.132 for application subject to pre-AIA 35 U.S.C. 102(a) or 102(e). See MPEP § 716.10 and In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982). Affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102 remain as affidavits or declarations under 37 CFR 1.32. Thus, the Office will treat affidavits or declarations of attribution for applications subject to the current 35 U.S.C. 102 as affidavits or declarations under 37 CFR 1.130, and affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102 as affidavits or declarations under 37 CFR 1.132, regardless of whether the affidavit or declaration is designated as an affidavit or declaration under 37 CFR 1.130, 1.131, or 1.132.
In evaluating whether a declaration under 37 CFR 1.130(a) is effective, Office personnel will consider the following criteria:
- (A) Whether the disclosure, which was applied in the rejection and is addressed in the affidavit or declaration, is subject to the exceptions of 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A). The provision of 37 CFR 1.130(a) is not available:
- (1) If the disclosure was made (e.g., patented, described in a printed publication, or in public use, on sale, or otherwise available to the public) more than one year before the effective filing date of the claimed invention. See MPEP § 2152.01 to determine the effective filing date. For example, if a public disclosure by the inventor or which originated with the inventor is not within the grace period of 35 U.S.C. 102(b)(1), it would qualify as prior art under 35 U.S.C. 102(a)(1) and could not be excepted under 35 U.S.C. 102(b)(1).
- (2) When the disclosure that is applied in a rejection is
- (a) a U.S. patent or U.S. patent application publication that
- (b) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and
- (c) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent.
- See MPEP § 717.01, subsection II., for more information on when declarations or affidavits pursuant to 37 CFR 1.130(a) are not available.
- (B) Whether the affidavit or declaration shows sufficient facts, in weight and character, to establish that
- (1) the disclosure was made by the inventor or a joint inventor, or
- (2) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
Some factors to consider are the following:
- (1) Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an "unequivocal" statement from the inventor or a joint inventor that he/she (or some specific combination of named joint inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982).
- (2) A mere statement from the inventor or a joint inventor, without any accompanying reasonable explanation, may not be sufficient where there is evidence to the contrary, such as a contrary statement from another named author that was filed in another application on behalf of another party. See Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (affirming rejection notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a non-applicant author submitting a letter declaring the non-applicant author’s inventorship).
- (C) Whether the formal requirements of a declaration or affidavit are met. See MPEP § 717.01(c)
- (D) Whether the affidavit or declaration is timely presented. See MPEP § 717.01(f) .
There is no requirement that the affidavit or declaration demonstrate that the disclosure by the inventor, a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from an inventor or a joint inventor was an "enabling" disclosure of the subject matter within the meaning of 35 U.S.C. 112(a). See MPEP § 2155.04.
The evidence necessary to show that the disclosure is by the inventor or a joint inventor or another who obtained the subject matter disclosed from the inventor or a joint inventor requires case-by-case analysis, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is an inventor originated disclosure. See MPEP §§ 2155.01 and 2155.03 for more information. This determination is similar to the current process for disqualifying a publication as not being by "others" discussed in MPEP § 2132.01, except that 35 U.S.C. 102(b)(1)(A) requires only that the disclosure originated from an inventor or a joint inventor.
37 CFR 1.130 does not contain a provision that "[o]riginal exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained" in contrast to the requirement for such exhibits in 37 CFR 1.131(b), because in some situations an affidavit or declaration under 37 CFR 1.130 does not necessarily need to be accompanied by such exhibits (e.g., a statement by the inventor or a joint inventor may be sufficient). However, in situations where additional evidence is required, such exhibits must accompany an affidavit or declaration under 37 CFR 1.130. In addition, an affidavit or declaration under 37 CFR 1.130 must be accompanied by any exhibits that the applicant or patent owner wishes to rely upon. See MPEP § 717.01(c) for more information on the formal requirements for a declaration or affidavit and any attached exhibits.
717.01(b) Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
37 CFR 1.130(b) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(b) pertains to the provisions of subparagraph (B) of 35 U.S.C. 102(b)(1) and 102(b)(2). 35 U.S.C. 102(b)(1)(B) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under 35 U.S.C. 102(a)(1) if the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if the subject matter disclosed had, before such subject matter was effectively filed under 35 U.S.C. 102(a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
717.01(b)(1) Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) [R-10.2019]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
In making a submission under 37 CFR 1.130(b), the applicant or patent owner is attempting to show that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
In evaluating whether a declaration under 37 CFR 1.130(b) is effective to disqualify a disclosure on which the rejection is based, Office personnel will consider the following criteria:
- (A) Whether the disclosure, which was applied in the rejection and is addressed in the affidavit or declaration, is subject to the exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B). The provision of 37 CFR 1.130(b) is not available:
- (1) If the disclosure was made (e.g., patented, described in a printed publication, or in public use, on sale, or otherwise available to the public) more than one year before the effective filing date of the claimed invention. See MPEP § 2152.01 to determine the effective filing date.
- (2) When the disclosure that is applied in a rejection is (1) a U.S. patent or U.S. patent application publication that (2) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and (3) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent.
- See MPEP § 717.01, subsection II, for more information on when the exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) are not available.
In the situation where the previous public disclosure by the inventor (or which originated with the inventor) was not within the grace period but was effective to disqualify an intervening disclosure as prior art by invoking the exception of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B), the previous public disclosure by, or originating with, the inventor would qualify as prior art under 35 U.S.C. 102(a)(1) and could not be excepted under 35 U.S.C. 102(b)(1)(A).
- (B) Whether the affidavit or declaration shows sufficient facts, in weight and character, to establish that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Some factors to consider are the following:
- (1) The declaration or affidavit must identify the subject matter publicly disclosed and provide the date of the public disclosure of such subject matter by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
- (2) If the subject matter publicly disclosed on the earlier date by the inventor or a joint inventor, or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication. See 37 CFR 1.130(b)(1). The Office requires a copy to determine not only whether the inventor is entitled to disqualify the disclosure under 35 U.S.C. 102(b), but also because, if the rejection is based on a U.S. patent application publication or WIPO publication of an international application to another and such application is also pending before the Office, this prior disclosure may be prior art under 35 U.S.C. 102(a) to the other earlier filed application, and this information may be useful in examination of both applications.
- (3) If the subject matter publicly disclosed on the earlier date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on the earlier date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
- (4) If the subject matter publicly disclosed on the earlier date is the same as the subject matter in the disclosure applied in a prior art rejection. See MPEP § 717.01(b)(2).
- (C) Whether the formal requirements of a declaration or affidavit are met. See MPEP § 717.01(c).
- (D) Whether the affidavit or declaration is timely presented. See MPEP § 717.01(f).
There is no requirement under 35 U.S.C. 102(b)(1)(B) that the mode of disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor (e.g., patenting, publication, public use, sale activity) be the same as the mode of disclosure of the intervening grace period disclosure.
There is also no requirement that the disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening grace period disclosure. See In re Kao, 639 F.3d 1057, 1066, 98 USPQ2d 1799, 1806 (Fed. Cir. 2011) (subject matter does not change as a function of how one chooses to describe it).
There is no requirement that the affidavit or declaration demonstrate that the disclosure by the inventor, a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from an inventor or a joint inventor was an enabling disclosure of the subject matter within the meaning of 35 U.S.C. 112(a). See MPEP § 2155.04.
Any remaining portion of an intervening grace period disclosure that was not previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor is available as prior art under 35 U.S.C. 102(a)(1). For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening grace period disclosure discloses elements A, B, C, and D, then only element D of the intervening grace period disclosure is available as prior art under 35 U.S.C. 102(a)(1).
The evidence necessary to show that the subject matter of a disclosure was previously disclosed by, or originated with, an inventor or a joint inventor requires case-by-case analysis.
37 CFR 1.130 does not contain a provision that "[o]riginal exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained" in contrast to the requirement for such exhibits in 37 CFR 1.131(b), because in some situations an affidavit or declaration under 37 CFR 1.130 does not necessarily need to be accompanied by such exhibits (e.g., a statement by the inventor or a joint inventor may be sufficient). However, in situations where additional evidence is required, such exhibits must accompany an affidavit or declaration under 37 CFR 1.130. In addition, an affidavit or declaration under 37 CFR 1.130 must be accompanied by any exhibits that the applicant or patent owner wishes to rely upon. See MPEP § 717.01(d) for more information on the formal requirements for a declaration or affidavit and any attached exhibits.
Finally, neither 35 U.S.C. 102(b)(1)(B) nor 102(b)(2)(B) discusses "the claimed invention" with respect to either the subject matter of the previous inventor-originated disclosure or the subject matter of the subsequent intervening disclosure. Any inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention. A determination of whether the exception in 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) is applicable to subject matter in an intervening disclosure does not involve a comparison of the subject matter of the claimed invention to either the subject matter of the previous inventor-originated disclosure or to the subject matter of the subsequent intervening disclosure.
717.01(b)(2) Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated Prior Public Disclosure [R-10.2019]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
I. "SAME" IS NOT "OBVIOUS"
The exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) are only applicable when the subject matter of the intervening disclosure is the same as the subject matter of the earlier inventor-originated prior public disclosure (e.g., a disclosure by an inventor or joint inventor, or another who obtained directly or indirectly from the inventor or a joint inventor). In other words, even if an intervening disclosure by a third party is obvious over an inventor-originated prior public disclosure, it would NOT be a disclosure of the same subject matter and the exceptions under 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply. Any showing that the intervening disclosure is the same subject matter as earlier disclosed by the inventor, joint inventor, or another who obtained it directly or indirectly from the inventor(s) must be sufficient, in character and weight, to establish that the two disclosures are to the same subject matter.
II. ONLY A PORTION MAY BE EXCEPTED AS PRIOR ART
Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter) is excepted as prior art under 35 U.S.C. 102(a). In other words, any portion of the third party’s intervening disclosure that was not part of the previous inventor-originated disclosure is still available for use in a prior art rejection. Therefore, examiners should be aware that a declaration under 37 CFR 1.130(b) may only disqualify a portion of a disclosure that was applied in a rejection in an Office action, and that other portions of the disclosure may still be available as prior art. For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses elements A, B, C, and D, then element D of the intervening U.S. patent, U.S. patent application publication, or WIPO published application is still available as prior art under 35 U.S.C. 102(a)(2).
III. MANNER OR MODES OF DISCLOSURES ARE NOT RELEVANT
The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b) is not critical. Just as the prior art provision of 35 U.S.C. 102(a)(2) encompasses any disclosure that renders a claimed invention available to the public, any manner of disclosure may be evidenced in an affidavit or declaration under 37 CFR 1.130(b). That is, when using an affidavit or declaration under 37 CFR 1.130(b) to disqualify an intervening disclosure as prior art based on a prior public disclosure by an inventor or a joint inventor, it is not necessary for the subject matter to have been disclosed in the same manner or using the same words. In other words, there is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply.
There is also no requirement that the mode (e.g., patenting, publication, public use, sale activity) of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure. For example, the inventor or a joint inventor may have publicly disclosed the subject matter in question via a slide presentation at a scientific meeting, while the intervening disclosure of the subject matter may have been made in a journal article.
A difference in the mode of disclosure or differences in the words used to describe the subject matter will not preclude the inventor from submitting an affidavit or declaration under 37 CFR 1.130(b) to disqualify the intervening disclosure as prior art.
IV. SPECIES/GENUS, GENUS/SPECIES, AND SPECIES/SPECIES DISCLOSURES
The exception to 35 U.S.C. 102(a)(2) applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Specifically, if subject matter of an intervening U.S. patent, U.S. patent application publication, or WIPO published application is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, the exception in 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening U.S. patent, U.S. patent application publication, or WIPO published application disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent, U.S. patent application publication, or WIPO published application is not available as prior art under 35 U.S.C. 102(a)(2). Conversely, the exception may not apply to subject matter of the intervening disclosure that is more specific than the subject matter previously publicly disclosed by the inventor or a joint inventor or that is directed to a different species. For example, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a species, the disclosure of the species in the subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application would be available as prior art under 35 U.S.C. 102(a)(2). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent, U.S. patent application publication, or WIPO published application would be available as prior art under 35 U.S.C. 102(a)(2).
717.01(c) Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations [R-07.2015]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
I. WHO MAY MAKE AFFIDAVIT OR DECLARATION
Anyone who has knowledge of the facts discussed in the declaration may sign a declaration under 37 CFR 1.130. In accordance with 37 CFR 1.130, however, it is the applicant or patent owner who may submit (i.e., file) an affidavit or declaration. When an assignee, obligated assignee, or person showing sufficient proprietary interest is the applicant under 35 U.S.C. 118 rather than the inventor, the inventor may sign an affidavit or declaration under 37 CFR 1.130 to disqualify a disclosure of the invention as prior art, but the declaration must be filed by a party having authority to take action in the application. Authority to file papers in an application generally does not lie with the inventor if the inventor is not the applicant.
II. FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS AND ATTACHED EXHIBITS
An affidavit is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths. See 602 et seq. for additional information regarding formal requirements of affidavits.
37 CFR 1.68 permits a declaration to be used instead of an affidavit. The declaration must include an acknowledgment by the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001 ) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.
Exhibits, such as those filed as part of an affidavit or declaration under 37 CFR 1.130, must comply with the requirements of 37 CFR 1.91 to be entered into an application file. Exhibits that do not comply with the requirements of 37 CFR 1.91 will be disposed of or returned to applicant at the discretion of the Office. See also MPEP § 608.03(a).
717.01(d) U.S. Patent or Application Publication Claiming Same Invention [R-11.2013]
[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]
When a rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401 et seq. of this title. See 37 CFR 1.130(c). Permitting two different applicants to each aver or declare that an inventor named in the other application derived the claimed invention without a derivation proceeding to resolve who the true inventor is could result in the Office issuing two patents containing patentably indistinct claims to two different parties. Thus, the provisions of 37 CFR 1.130 are not available in certain situations to avoid the issuance of two patents containing patentably indistinct claims to two different parties. See In re Deckler, 977 F.2d 1449, 1451–52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 "clearly contemplate—where different inventive entities are concerned—that only one patent should issue for inventions which are either identical to or not patentably distinct from each other" ) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977)). See the Trial Practice Guide for information on derivation proceedings.
The provisions of 37 CFR 1.130, however, would be available if: (1) The rejection is based upon a disclosure other than a U.S. patent or U.S. patent application publication (such as non-patent literature or a foreign patent document); (2) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application did not claim an invention that is the same or substantially the same as the applicant’s claimed invention; or (3) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application that does claim an invention that is the same or substantially the same as the applicant’s claimed invention, but the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent (e.g., an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation the affidavit or declaration under 37 CFR 1.130 contends that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor).
717.01(e) Passed Upon (or Decided by) by Primary Examiner [R-11.2013]
The question of sufficiency of affidavits or declarations under 37 CFR 1.130 should be reviewed and decided by a primary examiner.
Review of questions of formal sufficiency and propriety are by petition filed under 37 CFR 1.181. Such petitions are answered by the Technology Center Directors (MPEP § 1002.02(c)).
Review on the merits of a 37 CFR 1.130 affidavit or declaration is by appeal to the Patent Trial and Appeal Board. See MPEP § 1201.
717.01(f) Seasonable (or Timely) Presentation [R-11.2013]
Affidavits or declarations under 37 CFR 1.130 must be timely presented in order to be admitted. Affidavits and declarations submitted under 37 CFR 1.130 and other evidence traversing rejections are considered timely if submitted:
- (A) prior to a final rejection;
- (B) before appeal in an application not having a final rejection;
- (C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e); or
- (D) after the prosecution is closed (e.g., after a final rejection, after appeal, or after allowance) if applicant files the affidavit or other evidence with a request for continued examination (RCE) under 37 CFR 1.114 in a utility or plant application filed on or after June 8, 1995; or a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application.
All admitted affidavits and declarations are acknowledged and commented upon by the examiner in his or her next succeeding action.
For affidavits or declarations under 37 CFR 1.130 filed after appeal, see 37 CFR 41.33(d) and MPEP § 1206 and § 1211.03.
Review of an examiner’s refusal to enter an affidavit as untimely is by petition and not by appeal to the Patent Trial and Appeal Board. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941).
717.02 Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) [R-10.2019]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 - 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
35 U.S.C. 102(b)(2)(C) provides that disclosures shall not be prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections. See MPEP § 717.02(a) for more information on invoking this prior art exception and MPEP § 717.02(b) for more information on evaluating when the exception applies and is properly invoked.
In applying the provisions of 35 U.S.C. 102(b)(2)(C), 35 U.S.C. 102(c) provides that a joint research agreement can establish that disclosed subject matter and a claimed invention are deemed owned by the same person or subject to an obligation of assignment to the same person if the following three conditions are satisfied:
- A. The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention. See 35 U.S.C. 102(c)(1). The AIA defines the term "joint research agreement" as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. See 35 U.S.C. 100(h).
- B. The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement. See 35 U.S.C. 102(c)(2).
- C. The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement. See 35 U.S.C. 102(c)(3).
Joint research agreement subject matter under 35 U.S.C. 102(c) is treated under 37 CFR 1.104(c)(4)(ii), and joint research agreement subject matter under pre-AIA 35 U.S.C. 103(c) is treated under 37 CFR 1.104(c)(5)(ii).
The provisions of 35 U.S.C. 102(c) generally track those of the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). See MPEP § 2146. The major differences between 35 U.S.C. 102(c) ) and the CREATE Act are the following:
- A. The new provision (35 U.S.C. 102(c) ) is keyed to the effective filing date of the claimed invention, while the CREATE Act (pre-AIA 35 U.S.C. 103(c) ) focused on the date that the claimed invention was made; and
- B. The CREATE Act provisions (pre-AIA 35 U.S.C. 103(c) ) only applied to obviousness rejections and not to anticipation rejections.
717.02(a) Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) [R-10.2019]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 - 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
I. COMMON OWNERSHIP
In order to invoke common ownership to except a disclosure as prior art, the applicant (or the patent owner) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c) ). The statement must be signed in accordance with 37 CFR 1.33(b).
A. Definition of Common Ownership
The term "commonly owned" is intended to mean that the subject matter that would otherwise be prior art to the claimed invention and the claimed invention are entirely or wholly owned by, or under an obligation to assign to, the same person(s) or organization(s)/business entity(ies). If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention.
Specifically, if an invention claimed in an application is owned by more than one entity and those entities seek to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), then the disclosure to which the exception applies must be owned by or subject to an obligation of assignment to the same entities that owned the application not later than the effective filing date of the claimed invention. For example, assume Company A owns twenty percent of patent Application X and Company B owns eighty percent of patent Application X at the time of the effective filing date of the claimed invention in Application X. In addition, assume that Companies A and B seek to invoke the prior art exception for a disclosure in Patent Z under 35 U.S.C. 102(b)(2)(C). The relevant disclosure in Patent Z must have been co-owned, or have been under an obligation of assignment to both companies, not later than the effective filing date of the claimed invention in Application X in order for the prior art exception to be properly invoked. A statement such as "Application X and Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B" would be sufficient to establish common ownership.
There is no requirement that the entire disclosure in the 35 U.S.C. 102(a)(2) reference be commonly owned. If subject matter disclosed that was relied upon as the basis for the rejection(s) was commonly owned, then it may be proper to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). For example, if the rejections in an Office action are only based upon the disclosure for the first embodiment, then only the first embodiment of the 35 U.S.C. 102(a)(2) reference needs to be commonly owned. Therefore, using the facts from the example in the above paragraph, the statement establishing common ownership could state, "Application X and the first embodiment of Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B." This statement would be sufficient to establish common ownership of Application X and the first embodiment of Patent Z. In this case, the examiner may still apply Patent Z’s disclosure that is not applicable to the first embodiment (e.g., a disclosure unique to another embodiment) as prior art under 35 U.S.C. 102(a)(2).
For applications owned by a joint venture of two or more entities, both the application and the disclosure to which the exception applies must have been owned by, or subject to an obligation of assignment to, the joint venture not later than the effective filing date of the claimed invention in the application. For example, if Company A and Company B formed a joint venture, Company C, both Application X and the relevant disclosure in Patent Z must have been owned by, or subject to an obligation of assignment to, Company C not later than the effective filing date of the claimed invention in Application X in order for the relevant disclosure in Patent Z to be properly excepted as prior art under 35 U.S.C. 102(b)(2)(C). If Company A by itself always owned the relevant disclosure in Patent Z and Company C by itself always owned Application X, then the 35 U.S.C. 102(b)(2)(C) exception would not apply to the relevant disclosure in Patent Z.
As long as principal ownership rights to either the disclosed subject matter or the claimed invention under examination reside in different persons or organizations, common ownership does not exist. A license of the claimed invention under examination to another by the owner where basic ownership rights are retained would not defeat ownership.
B. Requirements to Establish Common Ownership
The requirement for common ownership not later than the effective filing date of the claimed invention is intended to preclude obtaining ownership of the disclosed subject matter after the effective filing date of the claimed invention in order to except that subject matter as prior art by invoking a prior art exception. A statement of present common ownership is not sufficient.
The question of whether common ownership exists not later than the effective filing date of the claimed invention is to be determined on the facts of the particular case in question. Actual ownership of the disclosed subject matter and the claimed invention by the same individual(s) or organization(s) or a legal obligation to assign both the disclosed subject matter and the claimed invention to the same individual(s) or organization(s)/business entity(ies) must be in existence not later than the effective filing date of the claimed invention in order for the 35 U.S.C. 102(b)(2)(C) exception to apply to the disclosed subject matter. A moral or unenforceable obligation would not provide the basis for common ownership.
Applications and subject matter disclosed in references (whether patents, patent applications, or patent application publications) will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, not later than the effective filing date of the claimed invention, if the applicant(s) or patent owner(s) make(s) a statement to the effect that the application and the disclosed subject matter were, not later than the effective filing date for the claimed invention, owned by or subject to an obligation of assignment to the same person. Such a statement is sufficient to establish common ownership of, or an obligation for assignment to, the same person(s) or organization(s) for purposes of 35 U.S.C. 102(b)(2)(C). The applicant(s), patent owner(s), or the representative(s) of record have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient because of their paramount obligation of candor and good faith to the USPTO.
The statement concerning common ownership should be clear and conspicuous (e.g., on a separate paper) to ensure the examiner notices the statement. For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected based upon subject matter disclosed in Patent A (either alone or in combination with other references) wherein Patent A is only available as prior art under 35 U.S.C. 102(a)(2). In her response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that:
"Application X and Patent A were, not later than the effective filing date of the claimed invention in Application X, owned by Company Z."
This statement alone is sufficient to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). Once common ownership is established, the subject matter disclosed in Patent A may not be used in a rejection under 35 U.S.C. 102 or 35 U.S.C. 103 against the claims of Application X. Patent A, however, could still be used as the basis for a double patenting rejection, if appropriate. See MPEP § 804 for more information on double patenting rejections.
The applicant may, but is not required to, present evidence (e.g., assignment records, affidavits or declarations by the common owner, or court decisions) supporting the existence of the common ownership, in addition to the above-mentioned statement concerning common ownership.
In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s or patent owner’s representation. For example, the independent evidence may show the lack of common ownership of (or the existence of an obligation to commonly assign) the application being examined and the applied subject matter in the U.S. patent, U.S. patent application publication reference, or international patent application publication under the Patent Cooperation Treaty (PCT). In such cases, the examiner should explain why the accuracy of the representation is doubted. In addition, the examiner may require objective evidence of common ownership of (or the existence of an obligation to assign) the application being examined and the applied subject matter not later than the effective filing date of the claimed invention in the application being examined. Examiners should note that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention.
Applicant(s) or patent owner(s) may submit, in addition to the statement regarding common ownership, the following objective evidence:
- (A) Reference to assignments, which are recorded in the U.S. Patent and Trademark Office in accordance with 37 CFR Part 3, and which convey the entire rights in the applications or patents to the same person(s) or organization(s);
- (B) Copies of unrecorded assignments, which convey the entire rights in the applications or patents to the same person(s) or organization(s), and which are filed in each of the applications;
- (C) An affidavit or declaration by the common owner, which is filed in the application or patent, and which states that there is common ownership, states facts which explain why the affiant or declarant believes there is common ownership, and is properly signed (i.e., signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization); and
- (D) Other evidence, which is submitted in the application or patent, and which establishes common ownership.
II. JOINT RESEARCH AGREEMENT
In order to invoke a joint research agreement to establish that the 35 U.S.C. 102(b)(2)(C) exception applies to a disclosure, the applicant (or patent owner) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were made by or on behalf of parties to a joint research agreement under 35 U.S.C. 102(c). The statement must also assert that the agreement was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c) ). The statement must be signed in accordance with 37 CFR 1.33(b).
If the names of the parties to the joint research agreement are not already stated in the application, it is necessary to amend the application to include the names of the parties to the joint research agreement in accordance with 37 CFR 1.71(g)(1). Specifically, 37 CFR 1.71(g)(1) provides that the specification may disclose or be amended to disclose the name of each party to the joint research agreement as required by 35 U.S.C. 102(c).
37 CFR 1.71(g)(2) provides that an amendment under 37 CFR 1.71(g)(1) must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if it is not filed: (1) within three months of the filing date of a national application; (2) within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 in an international application; (3) before the mailing of a first Office action on the merits; or (4) before the mailing of a first Office action after the filing of a request for continued examination under 37 CFR 1.114.
37 CFR 1.71(g)(3) provides that if an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 for the amendment to be effective. The requirements of 37 CFR 1.71(g)(3) (correction of the patent by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 ) also apply in the situation in which such an amendment is not filed until after the date the patent was granted. It is unnecessary to file a reissue application or request for reexamination of the patent to submit the amendment and other information necessary to establish that the prior art exception under 35 U.S.C. 102(b)(2)(C) applies in view of a joint research agreement.
The submission of such an amendment remains subject to the rules of practice: e.g., 37 CFR 1.116, 1.121, and 1.312. For example, if an amendment under 37 CFR 1.71(g) is submitted in an application under final rejection to overcome a rejection based upon a U.S. patent which qualifies as prior art only under 35 U.S.C. 102(a)(2), the examiner may refuse to enter the amendment under 37 CFR 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (37 CFR 1.321(d) ). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a double patenting rejection).
If an amendment under 37 CFR 1.71(g) is submitted to overcome a rejection based upon subject matter disclosed in a U.S. patent, U.S. patent application publication, or international patent application publication under the PCT, which qualifies as prior art only under 35 U.S.C. 102(a)(2), and the examiner withdraws the rejection, the examiner may need to issue an Office action containing a new double patenting rejection based upon the excepted subject matter in the patent or patent application publication. In these situations, such Office action can be made final, provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant. This is the case regardless of whether the claims themselves have been amended.
In addition to amending the specification to disclose the names of the parties to the joint research agreement, applicant must submit the required statement to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). 37 CFR 1.104(c)(4) sets forth the requirement for the statement, which includes a statement to the effect that the subject matter disclosed in the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 102(c), which was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c) ). The statement must be signed in accordance with 37 CFR 1.33(b). As with establishing common ownership, the applicant or patent owner may, but is not required to, present evidence supporting the existence of the joint research agreement.
If the applicant excepts as prior art the subject matter relied upon by the examiner by invoking the exception under 35 U.S.C. 102(b)(2)(C) and by following the procedures set forth in the rules, the examiner will treat the application under examination and the excepted subject matter in the 35 U.S.C. 102(a)(2) reference as if they are "owned by the same person or subject to an obligation of assignment to the same person" for purposes of 35 U.S.C. 102(b)(2)(C).
The following examples are provided for illustration only:
Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’, which is owned by Company A. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of the claimed invention in Company A’s application is December 12, 2014. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) and complying with the requirements of 37 CFR 1.71(g).
Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. Company A and University B have a joint research agreement (JRA), which goes into effect on January 2, 2015. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because the JRA was not in effect until January 2, 2015, which is after the effective filing date of Company A’s invention (December 12, 2014).
Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’. The JRA is limited to activities for invention Y and invention X’ was not made as a result of activities undertaken within the scope of the JRA. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because claimed invention X’ was not made as a result of the activities undertaken within the scope of the JRA.
For invoking the joint research agreement provisions in pre-AIA applications, see MPEP §§ 2146 - 2146.03.
717.02(b) Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked [R-10.2019]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 - 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
37 C.F.R. 1.104 Nature of examination.
*****
- (c) Rejection of claims.
- *****
- (4)
- (i) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
- (ii) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if:
- (A) The applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
- (B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
*****
37 CFR 1.104(c)(4) includes the provisions that pertain to commonly owned or joint research agreement subject matter for applications and patents subject to 35 U.S.C. 102 and 35 U.S.C. 103. Specifically, 37 CFR 1.104(c)(4) implements the provisions of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) in the AIA. Thus, 37 CFR 1.104(c)(4) is applicable to applications and patents that are subject to 35 U.S.C. 102 and 35 U.S.C. 103.
37 CFR 1.104(c)(4)(i) provides that subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
37 CFR 1.104(c)(4)(ii) addresses joint research agreements and provides that subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if: (1) the applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement (within the meaning of 35 U.S.C. 100(h) and 37 CFR 1.9(e) ) that was in effect on or before the effective filing date of the claimed invention and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (2) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
I. WHEN THE EXCEPTION CAN BE USED
It is important to recognize that the 35 U.S.C. 102(b)(2)(C) exception can only be invoked in regard to a disclosure that is applied in a rejection as prior art under 35 U.S.C. 102(a)(2) (disclosures in a U.S. patent, U.S. patent application, or WIPO published international application effectively filed before the effective filing date of the claimed invention). It is also important to recognize that the 35 U.S.C. 102(b)(2)(C) exception applies when the rejection is under 35 U.S.C. 102(a)(2) (anticipation) or 35 U.S.C. 103 (obviousness). In other words, the AIA expanded the previous commonly owned prior art exception under the CREATE Act to now apply to anticipation rejections and not just obviousness rejections.
II. WHEN THE EXCEPTION DOES NOT APPLY
The 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under 35 U.S.C. 102(a)(1) (disclosures publicly made before the effective filing date of the claimed invention). In other words, the prior art exception under 35 U.S.C. 102(b)(2)(C) only disqualifies the disclosure as prior art under 35 U.S.C. 102(a)(2). Thus, if the issue date of a U.S. patent or publication date of a U.S. patent application publication or WIPO published international application is before the effective filing date of the claimed invention, it may be prior art under 35 U.S.C. 102(a)(1), regardless of the fact that the subject matter disclosed and the claimed invention are commonly owned or resulted from a joint research agreement.
The 35 U.S.C. 102(b)(2)(C) exception is not effective to remove a disclosure applied as a basis for a double patenting rejection. In other words, disclosures excepted as prior art under 35 U.S.C. 102(b)(2)(C) could be the basis for statutory double patenting or nonstatutory (sometimes referred to as obviousness-type) double patenting rejections. See MPEP § 717.02(c), subsection III.
In addition, the prior art exception under 35 U.S.C. 102(b)(2)(C) is not effective to remove a disclosure as evidence of enablement or inherency. See MPEP § 2131.01.
III. REQUIREMENTS TO ESTABLISH COMMON OWNERSHIP
It is important to recognize what submission is sufficient to establish common ownership. The common ownership must be shown to exist not later than the effective filing date of the claimed invention. A statement of present common ownership is not sufficient (unless such statement was filed on the effective filing date of the claimed invention). In re Onda, 229 USPQ 235 (Comm’r Pat. 1985).
The following statement is sufficient to establish common ownership of, or an obligation for assignment to, the same person(s) or organizations(s):
Application [the application serial number] and the subject matter disclosed in the reference(s) [the patent identifier of the commonly owned applied art (whether U.S. patents, U.S. patent applications, U.S. patent application publications, or WIPO patent publications) that was relied upon in the rejection(s)] were, at the time the invention was effectively filed, owned by [the name of the person(s), organization(s), and/or business entity(ies) that own the application and the commonly owned applied art].
The applicant(s) or the representative(s) of record have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient because of their paramount obligation of candor and good faith to the USPTO.
The statement concerning common ownership should be clear and conspicuous (e.g., on a separate piece of paper or in a separately labeled section) in order to ensure that the examiner quickly notices the statement. Applicants may, but are not required to, submit further evidence, such as assignment records, affidavits or declarations by the common owner, or court decisions, in addition to the above-mentioned statement concerning common ownership.
For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected under 35 U.S.C. 103 using Patent A in view of Patent B wherein Patent A is only available as prior art under 35 U.S.C. 102(a)(2). In her response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that:
Application X and the subject matter disclosed in Patent A were, at the time the invention of Application X was effectively filed, owned by Company Z.
This statement alone is sufficient to except the subject matter disclosed in Patent A from being used in a rejection under 35 U.S.C. 103 against the claims of Application X. Note that such a statement would also be effective to preclude the excepted subject matter disclosed in Patent A from being used in an anticipation rejection under 35 U.S.C. 102(a)(2). It would not, however, be effective to preclude Patent A from being used in either an anticipation or obviousness rejection if Patent A was prior art under 35 U.S.C. 102(a)(1) (e.g., the patent issued before the effective filing date of the claimed invention and is not subject to any exception in 35 U.S.C. 102(b)(1) ).
In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s representation of either (1) the common ownership of, or (2) the existence of an obligation to commonly assign, the application being examined and the applied subject matter disclosed in the U.S. patent, U.S. patent application publication, or WIPO publication reference. In such cases, the examiner may explain why the accuracy of the representation is doubted and require objective evidence of common ownership of, or the existence of an obligation to assign, the application being examined and the applied subject matter disclosed in the reference as of the effective filing date of the application being examined. As mentioned above, applicant(s) may submit, in addition to the above-mentioned statement regarding common ownership, the following objective evidence:
- (A) Reference to assignments recorded in the U.S. Patent and Trademark Office in accordance with 37 CFR Part 3 which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s);
- (B) Copies of unrecorded assignments which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s) are filed in each of the applications;
- (C) An affidavit or declaration by the common owner which states that there is common ownership and states facts which explain why the affiant or declarant believes there is common ownership, which affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization; and
- (D) Other evidence which establishes common ownership of the application and the commonly owned applied art.
IV. REQUIREMENTS TO ESTABLISH A JOINT RESEARCH AGREEMENT
Once an examiner has established a prima facie case of unpatentability under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103, the burden of overcoming the rejection by invoking the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) is on the applicant or the patentee.
To overcome a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 based upon subject matter (whether disclosed in a U.S. patent document or publication or WIPO publication) which qualifies as prior art under only 35 U.S.C. 102(a)(2), the applicant must amend the specification of the application under examination to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with 37 CFR 1.71(g). The requirements of 37 CFR 1.71(g) are further discussed below. In addition to amending the specification to disclose the names of the parties to the joint research agreement, the applicant must submit the required statement to invoke the prior art exception of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c). 37 CFR 1.104(c)(4) sets forth the requirements for the statement, which includes a statement to the effect that the subject matter disclosed in the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h), which was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c) ). The statement must be signed in accordance with 37 CFR 1.33(b).
Like the common ownership or assignment provision, the joint research agreement must be shown to be in effect on or before the effective filing date of the claimed invention. The joint research agreement is NOT required to be in effect on or before the prior art date of the reference that discloses the subject matter that is sought to be excepted. As is the case with establishing common ownership, the applicant or patent owner may, but is not required to, present evidence supporting the existence of the joint research agreement. Furthermore, the Office will not request corroborating evidence in the absence of independent evidence which raises doubt as to the existence of the joint research agreement.
37 C.F.R. 1.71 Detailed description and specification of the invention.
*****
- (g)
- (1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement as defined in § 1.9(e).
- (2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth in § 1.17(i) if not filed within one of the following time periods:
- (i) Within three months of the filing date of a national application;
- (ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
- (iii) Before the mailing of a first Office action on the merits; or
- (iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.
- (3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.
*****
37 CFR 1.71(g) provides for the situation in which an application discloses or is amended to disclose the names of the parties to a joint research agreement to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c). 37 CFR 1.71(g)(1) specifically provides that the specification may disclose or be amended to disclose the name of each party to the joint research agreement because this information is required by 35 U.S.C. 102(c)(3).
37 CFR 1.71(g)(2) provides that an amendment under 37 CFR 1.71(g)(1) must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if it is not filed within one of the following time periods: (1) within three months of the filing date of a national application; (2) within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 in an international application; (3) before the mailing of a first Office action on the merits; or (4) before the mailing of a first Office action after the filing of a request for continued examination under 37 CFR 1.114.
37 CFR 1.71(g)(3) provides that if an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 for the amendment to be effective. The requirements of 37 CFR 1.71(g)(3) (correction of the patent by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 ) also apply in the situation in which such an amendment is not filed until after the date the patent was granted. It is unnecessary to file a reissue application or request for reexamination of the patent to submit the amendment and other information necessary to take advantage of 35 U.S.C. 102(c).
The submission of such an amendment remains subject to the rules of practice (e.g., 37 CFR 1.116, 1.121, and 1.312 ). For example, if an amendment under 37 CFR 1.71(g) is submitted in an application under final rejection to overcome a prior art rejection based upon a U.S. patent which qualifies as prior art only under 35 U.S.C. 102(a)(2), the examiner may refuse to enter the amendment under 37 CFR 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (37 CFR 1.321(d) ). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a double patenting rejection).
If an amendment under 37 CFR 1.71(g) is submitted to overcome a prior art rejection based upon subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO publication which qualifies as prior art only under 35 U.S.C. 102(a)(2), and the examiner withdraws the prior art rejection, the examiner may need to issue an Office action containing a new double patenting rejection based upon the excepted subject matter. In these situations, such Office action can be made final, provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant. This is the case regardless of whether the claims themselves have been amended.
If the applicant excepts as prior art the subject matter relied upon by the examiner in accordance with 35 U.S.C. 102(b)(2)(C) and 102(c) and the procedures set forth in the rules, the examiner will treat the application under examination and the disclosure applied in the prior art rejection as if they are commonly owned for purposes of 35 U.S.C. 102(b)(2)(C).
The following examples are provided for illustration only:
Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of invention X’. Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a U.S. patent application disclosing and claiming invention X’, which is an obvious variant of invention X. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 102(c) to except the subject matter disclosed in University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103.
Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a U.S. patent application disclosing and claiming invention X’, which is an obvious variant of invention X. Company A and University B have a joint research agreement (JRA), which goes into effect on May 1, 2013. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 102(c) to except the subject matter disclosed in University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 because the JRA was not in effect until after the claimed invention was effectively filed.
Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a provisional U.S. patent application disclosing invention X’. On June 13, 2013, Company A filed a U.S. patent application claiming the benefit of the prior provisional application and also disclosing and claiming invention X’, which is an obvious variant of invention X. Company A and University B have a joint research agreement (JRA), which goes into effect on May 1, 2013. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 102(c) to except the subject matter disclosed in University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 because the JRA was not in effect until after the claimed invention was effectively filed as the relied upon provisional application which was filed before the JRA fully supported the invention X’ and therefore the invention was effectively filed before the JRA.
Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of invention X’ but the JRA is limited to activities for invention Y, which is distinct from invention X. Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a U.S. patent application disclosing and claiming invention X’, which is an obvious variant of invention X. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions 35 U.S.C. 102(b)(2)(C) and 102(c) to except the subject matter disclosed in University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 because the claimed invention was not made as a result of the activities undertaken within the scope of the JRA.
717.02(c) Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) [R-10.2019]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 - 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
Examiners are reminded that a disclosure that is prior art under 35 U.S.C. 102(a)(1) is not excepted as prior art even if the reference is excepted under 35 U.S.C. 102(b)(2)(C).
Generally, subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO publication reference that is prior art under 35 U.S.C. 102(a)(2) is only excepted when:
- (A) a proper submission is filed (see MPEP § 717.02(b) for more information) establishing:
- (1) Common ownership. A proper submission may be a clear and conspicuous a statement to the effect that the claimed invention and the subject matter disclosed were, not later than the effective filing date of the claimed invention, owned by, or subject to an obligation of assignment to, the same person; or
- (2) A joint research agreement. A proper submission may be (a) amendment to the specification of the application under examination to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with 37 CFR 1.71(g), and (b) a clear and conspicuous statement to the effect that subject matter disclosed in the prior art was developed and the claimed invention was made by or on the behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h), which was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement;
- (B) the reference only qualifies as prior art under 35 U.S.C. 102(a)(2) (e.g., not under 35 U.S.C. 102(a)(1) ); and
- (C) the reference was used in an anticipation rejection under 35 U.S.C. 102(a)(2) or obviousness rejection under 35 U.S.C. 103 (e.g., not a double patenting rejection).
See MPEP § 717.02(b) for additional information pertaining to establishing common ownership or a joint research agreement.
I. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS NOT BEEN ESTABLISHED
If the application file being examined has not established that the subject matter disclosed in the reference is excepted as prior art under 35 U.S.C. 102(b)(2)(C), the examiner will:
- (A) assume the subject matter disclosed in the reference is not excepted under 35 U.S.C. 102(b)(2)(C);
- (B) examine the application on all grounds other than any possible exception of the subject matter disclosed in the reference patent(s) or application(s) arising from a possible prior art rejection based on prior art under 35 U.S.C. 102(a)(2);
- (C) consider the applicability of any references under either 35 U.S.C. 102(a)(2) or 103 based on prior art under 35 U.S.C. 102(a)(2), including provisional rejections under 35 U.S.C. 102(a)(2) and under 35 U.S.C. 103 based on provisional prior art under 35 U.S.C. 102(a)(2); and
- (D) apply the best references against the claimed invention by rejections under 35 U.S.C. 102 and 35 U.S.C. 103, including any rejections based on prior art under 35 U.S.C. 102(a)(2), until such time that the subject matter disclosed in the reference is shown to be excepted under 35 U.S.C. 102(b)(2)(C). When applying any disclosures that only qualify as prior art under 35 U.S.C. 102(a)(2) in a prior art rejection against the claims, the examiner should anticipate that the subject matter disclosed in the reference may be excepted under 35 U.S.C. 102(b)(2)(C) and consider whether other rejections based on alternative prior art should be made in case the subject matter is excepted as prior art. See MPEP § 717.02(b). If the disclosure applied in the rejection is properly excepted as prior art under 35 U.S.C. 102(a)(2) and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made, except as provided in MPEP § 706.07(a) and this section. If the subject matter disclosed in the reference is excepted as prior art under the joint research agreement provision of 35 U.S.C. 102(c) and a new subsequent double patenting rejection based upon the excepted subject matter is applied, the next Office action, which contains the new double patenting rejection, may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) ). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.
II. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS BEEN ESTABLISHED
If the application being examined has established that the disclosure is excepted as prior art under 35 U.S.C. 102(b)(2)(C) the examiner will:
- (A) examine the applications as to all grounds, except the disclosure that is excepted as prior art under 35 U.S.C. 102(a)(2);
- (B) examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection, if appropriate in view of the excepted subject matter disclosed in the reference; and
- (C) invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate (see 37 CFR 1.321 ).
III. DOUBLE PATENTING REJECTIONS
Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier application, subject to the conditions discussed in MPEP § 804 et seq. In addition, double patenting rejection may arise as a result of the joint research agreement exception. Congress recognized that deeming a joint research agreement as common ownership would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003)). For purposes of double patenting analysis, the U.S. application or patent and the subject matter excepted under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) will be treated as if commonly owned.
A rejection based on a pending U.S. application would be a provisional double patenting rejection. The practice of rejecting claims on the ground of double patenting in commonly owned applications of different inventive entities is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See MPEP § 804 for guidance on double patenting issues. In accordance with established patent law doctrines, double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the existing provisions of 37 CFR 1.321, the terminal portion of the term of the reference patent and including in the disclaimer a provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or patent which formed the basis for the rejection, thereby eliminating the problem of extending patent term. For a double patenting rejection based on a non-commonly owned U.S. patent (treated as if commonly owned, which is similar to treatment under the CREATE Act), the nonstatutory double patenting rejection may be obviated by filing a terminal disclaimer in accordance with 37 CFR 1.321(d). See MPEP §§ 804 and 804.02.
717.02(d) Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) [R-10.2019]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 - 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
The following form paragraphs should be used in addressing the prior art exception under 35 U.S.C. 102(b)(2)(C):
¶ 7.20.01.aia 103 Rejection Using Prior Art Excepted Under 102(b)(2)(C) Because Reference is Prior Art Under 102(a)(1)
Applicant has provided a submission in this file that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement not later than the effective filing date of the claimed invention. However, although subject matter disclosed in the reference [2] has been excepted as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C).
Applicant may overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the 103 rejection is based on subject matter disclosed in a reference that has since been excepted under 102(b)(2)(C), but still qualifies as prior art under 35 U.S.C. 102(a)(1).
3. In bracket 1, identify the common assignee.
4. In bracket 2, identify the reference which discloses the subject matter that has been excepted.
¶ 7.20.02.aia Joint Inventors, Common Ownership Presumed
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).
¶ 7.20.04.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Common Ownership or Assignment Provision
Applicant has attempted to show that subject matter disclosed in the reference [1] is excepted as prior art under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time the claimed invention was effectively filed. However, applicant has failed to provide a statement that the claimed invention and the subject matter disclosed were owned by, or subject to an obligation of assignment to, the same person no later than the effective filing date of the claimed invention in a conspicuous manner, and therefore, the subject matter disclosed in the reference is not excepted as prior art under 35 U.S.C. 102(a)(2). Applicant must file the required submission in order to properly except the subject matter under 35 U.S.C. 102(b)(2)(C). See MPEP § 2154.02(c).
In addition, applicant may rely upon the exception under 35 U.S.C. 102(b)(2)(A) to overcome the rejection under 35 U.S.C. 102(a)(2) either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph should be included in all actions containing rejections using 35 U.S.C. 102(a)(2) prior art, whether anticipation or obviousness rejections, where an attempt has been made to except subject matter disclosed in the reference under 35 U.S.C. 102(b)(2)(C), but where the applicant has not provided a proper statement indicating common ownership or assignment not later than the effective filing date of the claimed invention.
3. In bracket 1, identify the commonly owned applied art (e.g., patent or co-pending application).
4. In bracket 2, identify the common assignee.
¶ 7.20.05.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Joint Research Agreement Provisions of 35 U.S.C. 102(c)
Applicant has attempted to show that subject matter disclosed in the reference [1] is excepted as prior art under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was subject to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly except the subject matter disclosed in the reference under 35 U.S.C. 102(b)(2)(C). See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).
In addition, applicant may overcome the rejection either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained, either directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be included in all actions containing obviousness or anticipation rejections where an attempt has been made to except subject matter disclosed in the 35 U.S.C. 102(a)(2) prior art reference under 35 U.S.C. 102(b)(2)(C) using the joint research agreement provisions but the attempt is ineffective.
3. In bracket 1, identify the reference which discloses subject matter that is sought to be excepted via 35 U.S.C. 102(b)(2)(C).
4. In bracket 2, identify the reason(s) why the attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 102(b)(2)(C) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).
Use form paragraph 7.38.01 or 7.38.02 where the submission is persuasive. See MPEP § 707.07(f).
718 Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c) [R-10.2019]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159.]
37 C.F.R. 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.
*****
- (c) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
- (1) A terminal disclaimer in accordance with § 1.321(c); and
- (2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
- (d) The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
- (1) A claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013; or
- (2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013.
- (e) In an application for patent to which the provisions of § 1.130 apply, and to any patent issuing thereon, the provisions of this section are applicable only with respect to a rejection under 35 U.S.C. 102(g) as in effect on March 15, 2013.
See MPEP §§ 804.03 and 2146 - 2146.03 for subject matter disqualified as prior art under pre-AIA 35 U.S.C. 103(c) where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.
37 CFR 1.131(c) addresses those situations in which the rejection in an application or patent under reexamination to be overcome is a rejection under 35 U.S.C. 103 (based on prior art under pre-AIA 35 U.S.C. 102 ) in view of a U.S. patent or U.S. patent application publication which is not prior art under pre-AIA 35 U.S.C. 102(b) due to the requirement in 37 CFR 1.131(a) that any U.S. patent or U.S. patent application publication to be antedated not claim interfering subject matter (as defined in 37 CFR 41.203(a)) as the application or patent under reexamination. The applicant or patent owner is also prevented from proceeding in an interference due to the provision in 37 CFR 41.206 that an interference will not normally be declared or continued between applications that are commonly owned, or an application and an unexpired patent that are commonly owned.
As 37 CFR 1.131(c) addresses those situations in which the inventions defined by the claims in the application or patent under reexamination and by the claims in the U.S. patent or patent application publication are not patentably distinct, 37 CFR 1.131(c)(1) requires a terminal disclaimer in accordance with 37 CFR 1.321(c), and 37 CFR 1.131(c)(2) requires an oath or declaration stating, inter alia, that the inventor named in the application or patent under reexamination is the prior inventor under pre-AIA 35 U.S.C. 104. The inventor named in the application or patent under reexamination must have invented the claimed subject matter before the actual date of invention of the subject matter of the reference claims. The affidavit or declaration may be signed by the inventor(s), the attorney or agent of record, or assignee(s) of the entire interest. It is noted that a terminal disclaimer is only effective in overcoming a nonstatutory double patenting rejection and cannot be used to overcome statutory double patenting. See MPEP § 804, subsection I.B.2.
The phrase "prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013" requires that the inventor named in the application or patent be the prior inventor within the meaning of pre-AIA 35 U.S.C. 104, in that an applicant or patent owner may not:
- (A) establish a date of invention in a foreign country other than a NAFTA or WTO member country;
- (B) establish a date of invention in a WTO member country other than a NAFTA country earlier than January 1, 1996; or
- (C) establish a date of invention in a NAFTA country other than the U.S. earlier than December 8, 1993.
A U.S. patent or U.S. patent application publication that anticipates the claimed subject matter cannot be disqualified as prior art under pre-AIA 35 U.S.C. 103(c) or 37 CFR 1.131(c).
719 File Wrapper [R-07.2015]
The electronic file record in which the U.S. Patent and Trademark Office maintains the application papers is referred to as an image file wrapper. The electronic file record is the official record of the application.
See MPEP § 202 for appropriate notations to be made in the file history with regard to claims for priority to, or the benefit of, earlier filed applications under 35 U.S.C. 119, 120, 121, 365, and 386.
719.01 Papers in Image File Wrapper [R-11.2013]
Papers that do not become a permanent part of the record should not be entered as a paper in the image file wrapper. No paper legally entered in the image file wrapper should ever be withdrawn or expunged from the application file, especially a part of the original disclosure of the application, without special authority of the Director. However, 37 CFR 1.59 provides that certain documents may be expunged if they were unintentionally submitted or contain proprietary information which has not been made public and is not important to a decision of patentability. See MPEP § 724. Form paragraph 7.214 may be used to notify applicant that papers in an application that has received a filing date ordinarily will not be returned.
¶ 7.214 Papers Not Returned, Pro Se
Papers in an application that has received a filing date pursuant to 37 CFR 1.53 ordinarily will not be returned. If applicant has not preserved copies of the papers, the Office will furnish copies at applicant’s expense. See 37 CFR 1.19 for a list of the current fees. See MPEP § 724.05 for information pertaining to petitions to expunge information.
719.02 Residence of Inventor Changed [R-07.2015]
The distinction between "residence" and mailing address should not be lost sight of. See MPEP § 602.08(a).
Unless specifically requested by applicant, the residence(s) associated with the inventor(s) will not be changed. For example, if a new oath gives a different residence from the original, the file will not be changed.
For a patent application publication to be published with residence information that differs from that originally filed, the revised information must be entered into the Office electronic records at least nine weeks before the publication date of the application. For patent applications filed on or after September 16, 2012, in order for a patent to issue with the new residence, applicants must file a corrected Application Data Sheet (37 CFR 1.76(c) ) showing the new residence information with underlining for insertions and strike-through or brackets for text removed. See MPEP § 601.05(a). For applications filed prior to September 16, 2012, applicants are strongly encouraged to file a Supplemental Application Data Sheet showing the new residence information preferably with underlining for insertions and strike-through or brackets for text removed. See MPEP § 601.05(b).
719.03 Classification During Examination [R-08.2012]
When a new application is received in a Technology Center, the classification of the application and the initials or name of the examiner who will examine it or other assigned docket designation are noted in the application file. See also MPEP § 903.08(b).
719.04 Index of Claims [R-11.2013]
The "Index of Claims" found in the image file wrapper of an application is frequently referenced. It should be updated with each Office action to maintain a reliable index of all claims in the application.
The claim numbers appearing on the Index of Claims refer to the claim numbers during prosecution while the adjacent columns refer to the status of each of the claims and the final column refers to the final numbering of the allowed claims (if applicable).
A space is provided above each adjacent column for completion by the examiner to indicate the date of each Office action together with the resulting status of each claim. At the time of allowance, the examiner places the final patent claim numbers in the column marked "Final."
719.05 Field of Search [R-10.2019]
In the first action on the merits of an application, the examiner must record in the appropriate sections of the Official Correspondence "Search Notes" form the areas in which the search for prior art was made. The examiner must also indicate the date(s) on which the search was conducted and provide his/her initials. In subsequent actions, where the search is brought up to date and/or where a further search is made, the examiner must indicate that the search has been updated and/or identify the additional field of search and include the date and the examiner’s initials in the appropriate sections of the "Search Notes" form. Any search updates should include the appropriate databases and the search queries and classifications employed in the original search. See MPEP § 904. Great care should be taken so as to clearly indicate the places searched and the date(s) on which the search was conducted and/or updated.
In order to provide a complete, accurate, and uniform record of what has been searched and considered by the examiner for each application, the U.S. Patent and Trademark Office has established procedures for recording search data in the application file. Such a record is of importance to anyone evaluating the strength and validity of a patent, particularly if the patent is involved in litigation.
Searches are listed in the "SEARCHED" boxes and/or "SEARCH NOTES" box of the "Search Notes" form.
For example, in the sample "Search Notes" form reproduced below, the "SEARCH NOTES" box indicates how the Search was limited for documents classified under CPC symbols D03D 1/0005 and B02C 19/0081. The absence of entries in the "SEARCH NOTES" box for the other classification symbols searched indicates that all documents having those symbols were reviewed or there is a search history printout in the file indicating how the search of those symbols was limited. As provided in subsection II.B below, a complete search history in the form of a printout must be included in the application file any time a limited electronic search was performed.
I. ENTRIES IN "SEARCHED" BOXES
The Search Notes form includes three "SEARCHED" boxes for recording searches in Cooperative Patent Classification (CPC), CPC Combination Sets and U.S. Patent Classification (USPC). When documenting a classification search, as described below, the examiner should ensure the proper box(es) is/are used.
A classification search is defined as a search of the documents in a particular classification location, whether classified by CPC or USPC, and may be limited by a text query, filters or other means. When a classification search is performed, the classification symbol must be recorded in the appropriate "SEARCHED" box section of the "Search Notes" form along with the date that the search was performed (or updated) and the examiner’s initials. When a classification search is limited, the examiner must ensure that how the search was limited is made of record. In most situations, how the search was limited would be apparent in a search history printout and in these situations, the examiner should include the printout with the "Search Notes" form when making the "Search Notes" of record. When the search is limited by an approach not apparent in the search history printout, the manner in which the classification search was limited should be made of record by annotating the "SEARCH NOTES" box. Unless a search of all of the documents for a particular classification location was performed, it would be inaccurate to merely record the classification symbol in the "SEARCHED" box without including the search history printout or indicating how the search was limited in the "SEARCH NOTES" box.
II. ENTRIES IN "SEARCH NOTES" BOX
Entries made in the "SEARCH NOTES" box are of equal importance to those placed in the "SEARCHED" box. They are intended to complete the application file record of areas and/or documents considered by the examiner in his or her search.
A. Format of Entries in the "SEARCH NOTES" Section
The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
- (A) Annotations indicating how a classification search was limited, as discussed in subsection I above.
- (B) Text search performed in a particular database where no classification search was performed.
If a text search was performed in a particular database and no classification search was performed, the following entry or its equivalent must be recorded in the "SEARCH NOTES" box of the "Search Notes" form: "See search history printout(s)" along with the date or dates that the search was performed (or updated) and the examiner’s initials. A search history printout must also be included in the file. See subsection II.B below.
- (C) Searches made within the International Patent Classification System (IPC).
- (D) Searches performed by the Scientific and Technical Information Center (STIC).
- The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL Web page. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the "SEARCH NOTES" box of the "Search Notes" form: "See search history printout(s)" along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.
- (E) A consultation with other examiners to determine if relevant search fields exist in their areas of expertise. If the subclass is not searched, record the class and subclass, if any, discussed, followed by "(consulted)." This entry may also include the name of the examiner consulted and the art unit. Examples
F16B fasteners (consulted)
F16B fasteners (consulted J. Doe A.U. 3501)
F16B 2/00 (consulted)
- (F) Searches performed in electronic journals and electronic books available to examiners on their desktop through the STIC NPL website. Examiners should contact their EIC if they need assistance using these tools and creating a search history printout.
- (G) Searches performed in other media collections or databases (e.g., CD-ROM databases, specialized databases, etc.), record data as necessary to provide unique identification of material searched and sufficient information as to the search query or request so that the search can be updated. The record should also document the location of the database and its form (CD-ROM, etc.).
- Example: Citing a biotech CD-ROM database
Entrez: Sequences, National Center for Biotechnology Information, Version 7.19.91b (CD-ROM, TC 1600) Searched HIV and vaccine; neighbored Galloway article dated 6/5/91 on April 1, 1990.
- Example: Citing a nonbiotech CD-ROM database
Computer Select, (November, 1991), Ziff Davis Communications Co., (CD-ROM, STIC), Searched Unix and emulation on December 1, 1991.
-
- (H) Searches performed on the Internet.
- For Internet search engines, such as Google®, Yahoo®, and Bing®, print out the first page and any of the following pages that include names of any Web pages reviewed during the search. Use the print icon on the Microsoft Internet Explorer® toolbar or use the file-print command. Review the printout to determine if the Internet search engine name, the search logic, and the date of the search are present. If any of these are missing, write the missing information on the printout. Indicate all Web pages reviewed.
- (I) Nonelectronic searches of publications in paper form, e.g., searches of the print books or journals in an EIC. Record according to the following for each type of literature search:
- (1) Abstracting publications, such as Chemical Abstracts, record name of publications, list terms consulted in index, and indicate period covered. Examples
Chem. Abs, Palladium hydride Jan.-June 1975
Eng. Index, Data Conversion Analog to Digital 1975
- (2) Periodicals — list by title, volume, issue, pages and date, as appropriate. Examples
Popular Mechanics, June-Dec. 1974
Lubrication Engineering, vols. 20-24
- (3) Books — list by title, author, edition or date, pages, as appropriate. Example
Introduction to Hydraulic Fluids, Roger E. Hatton, 1962
- (4) Other types of literature not specifically mentioned herein (i.e., catalogs, manufacturer’s literature, private collections, etc.).
- Record data as necessary to provide unique identification of material searched.
- Example
Sears Roebuck catalog, Spring-Summer, 1973.
- A cursory or browsing search through a number of materials that are not found to be of significant relevance may be indicated in a collective manner, e.g., "Browsed STIC shelves under QA 76.5" or "Browsed text books in STIC relating to......................" More detailed reviews or searches through books and periodicals or any search of terms in abstracting publications should be specifically recorded, however.
- (1) Abstracting publications, such as Chemical Abstracts, record name of publications, list terms consulted in index, and indicate period covered.
- (J) A review of art cited in a parent application or an original patent, as required for all continuation and continuation-in-part applications, divisional applications, reissue applications and reexamination proceedings, or a review of art cited in related applications.
- Record the application number of a parent application, followed by "refs. checked" or "refs. ck’ed." If for any reason not all of the references have been checked because they are not available, such exceptions should be noted.
- Examples
S. N. XX/495,123 refs. checked
S. N. XX/490,000 refs. checked
S. N. XX/480,111 refs. checked except for Greek patent to Kam
S. N. XX/410,113 refs. not checked since the file was not available
- Record the patent number of a parent or related application that is now patented or of an original patent now being reissued with "refs. checked" or "refs. ck’ed."
- Examples
Pat. 3,900,000 refs. checked
Pat. 3,911,111 refs. ck’ed
- (K) A review of documents cited in a related trial before the Patent Trial and Appeal Board.
- Record the trial number, U.S. Patent on trial and date reviewed. Examples
IPR2012-99999 Reviewed Inter Partes Review of U.S. Patent No. 9,999,999 on 12/31/2019
PGR2015-99999 Reviewed Post Grant Review of U.S. Patent No. 9,999,999 on 12/31/2019
CBM2016-99999 Reviewed Covered Business Method Patent Review of U.S. Patent No. 9,999,999 on 12/31/2019
- Record the trial number, U.S. Patent on trial and date reviewed.
B. Search History Printouts
Any time that a limited electronic search was performed (e.g., limited classified search or text search), a complete search history in the form of a printout must be included in the application file. The search history must include the following minimum information:
- (A) all the search logic or chemical structure or sequence(s) used as a database query;
- (B) all the name(s) of the file(s) searched and the database service;
- (C) the date the search was made or updated; and
- (D) an indication of the examiner who performed the search (e.g. a user ID or the examiner’s initials).
It would be improper to merely list the tool/database, e.g., "EAST" or identify the search queries in the "SEARCH NOTES" box of the "Search Notes" form. A search history printout should be devoid of result printouts to limit the "bulk search printouts."
Regarding nucleotide and peptide sequence searches, these searches must be documented by printout(s). A copy of a printout for each database source searched must be included in the application file. Each printout must include all the information up to the "ALIGNMENTS" section.
Most of the database services accessed in application searches provide a command to display or print the search history which includes most, if not all, of the minimum required information for documenting database searches. Table 1 below lists the history command for each database service and the required minimum documentation elements included when the history command is entered. Any missing elements may be documented by writing them on the printout of the search history or by supplying further portions of the search transcript which do include the missing elements.
If there are several search statements in the history, the statement or statements of which the results were reviewed should be indicated.
| TABLE 1 | |||||
| History Commands and Included Elements by Database Service ("Yes" below indicates the element is present) | |||||
| Database Service | History Command | Name of Database Service | Search Logic | Name of File(s) Searched | Date of Search |
| ProQuest Dialog | Click on Export All Searches | Yes | Yes | Yes | Yes |
| STN | D his full | Yes | Yes | Yes | Yes |
| SciFinder | Select History from the Saved Searches drop-down menu, Print to PDF or Export to Microsoft Word | Yes | Yes | Yes | Yes |
| Questel-Orbit | Click Search History from the My session menu | Yes | Yes | Yes | Yes |
| Lexis/Nexis | Click History; print page | Yes | Yes | Yes | Yes |
| ABSS System | None | Yes | Yes | Yes | Yes |
| EAST* | View, Search History | Yes | Yes | Yes | Yes |
| WEST* | Yes | Yes | Yes | Yes | Yes |
| IEEE Xplore | Option 1: Print out search results page Option 2: Sign In (personal account available as part of USPTO subscription), click Search History | Yes | Yes | Yes | Yes |
| Knovel | Print out search results page | Yes | Yes | Yes | Yes |
| EBSCOHost | Click Search History, then Print Search History | Yes | Yes | Yes | Yes |
| IP.com | Print out search results page | Yes | Yes | Yes | Yes |
| ACM Digital Library | Print out search results page | Yes | Yes | Yes | Yes |
| INSPEC (ProQuest Dialog) | Click on Export All Searches | Yes | Yes | Yes | Yes |
| SPIE Digital Library | Print out search results page | Yes | Yes | Yes | Yes |
| Research Disclosure | Print out search results page | Yes | Yes | Yes | Yes |
*Examiners may acquire user’s manuals for EAST and WEST through the Office of Patent Automation website. Assistance for other electronic database searches may be acquired from the staff of the STIC-Electronic Information Centers (EIC).
Explanation of Table Terminology
History Command - Generally, a display of what the user has asked the search software to do will display the search logic entered by the user. Some histories are limited to display of the searches done only in the current file while others deliver a complete record of what file or files were accessed and all searches done since sign on.
Name of Database Service - This is the name of the database service (i.e., EAST, IEEE Xplore) used to perform the search.
Search Logic - Generally, a display of the search commands executed by the search software. For a structure or sequence search, this can be a printout of the structure or sequence used to query the system.
Name of File(s) Searched - The name of the collection(s) of data accessed.
Date of Search - Dialog and Questel-Orbit do not display the date of search as part of the history command. Dialog and Questel-Orbit supply the date of search during log off. For WEST examiners should use the eRF search history options.
III. INTERFERENCE SEARCH HISTORY
When an application is in condition for allowance, an interference search must be made by using the most efficient and effective manner based on the claimed subject matter in the broadest claim (e.g., by performing a text search, or a classified search, or a combination of text search and classified search, of the "US-PGPUB" database in EAST or WEST). Examiners are reminded that some applications, such as continuation-in-part applications, may contain claims entitled to different effective filing dates (see MPEP §§ 2133.01 and 2152.01), and that each effective filing date should be considered when performing the interference search. If the application contains a claim directed to a nucleotide or peptide sequence, the examiner must submit a request to STIC to perform an interference search of the sequence.
Completion of the interference search should be recorded in the "INTERFERENCE SEARCH" section of the "Search Notes" form with an identification of the manner in which the interference search was limited (if any) in the "Search Notes" by providing an appropriate annotation.
A printout of only the database(s) searched, the query(ies) used in the interference search (if any), and the date the interference search was performed must be made of record in the application file. The result printouts of the interference search must not be placed in the application file.
IV. INFORMATION NOT RECORDED IN THE APPLICATION FILE
For an indication of consideration or nonconsideration of prior art citations submitted by applicant in Information Disclosure Statements (37 CFR 1.97 and 1.98 ), see MPEP § 609 et seq.
720 Public Use Proceedings [R-07.2015]
Effective September 16, 2012, former 37 CFR. 1.292 authorizing petitions seeking institution of public use proceedings was removed from title 37. For information necessary regarding the former process, the August 2012 revision of the MPEP (www.uspto.gov/web/offices/pac/mpep/old/mpep_E8R9.htm ) may be consulted.
721‑723 [Reserved] [R-]
724 Trade Secret, Proprietary, and Protective Order Materials [R-08.2012]
Situations arise in which it becomes necessary, or desirable, for parties to proceedings in the Patent and Trademark Office relating to pending patent applications or reexamination proceedings to submit to the Office trade secret, proprietary, and/or protective order materials. Such materials may include those which are subject to a protective or secrecy order issued by a court or by the International Trade Commission (ITC). While one submitting materials to the Office in relation to a pending patent application or reexamination proceeding must generally assume that such materials will be made of record in the file and be made public, the Office is not unmindful of the difficulties this sometimes imposes. The Office is also cognizant of the sentiment expressed by the court in In re Sarkar, 575 F.2d 870, 872, 197 USPQ 788, 791 (CCPA 1978), which stated:
[T]hat wherever possible, trade secret law and patent laws should be administered in such manner that the former will not deter an inventor from seeking the benefit of the latter, because, the public is most benefited by the early disclosure of the invention in consideration of the patent grant. If a patent applicant is unwilling to pursue his right to a patent at the risk of certain loss of trade secret protection, the two systems will conflict, the public will be deprived of knowledge of the invention in many cases, and inventors will be reluctant to bring unsettled legal questions of significant current interest . . . for resolution.
Parties bringing information to the attention of the Office for use in the examination of applications and reexaminations are frequently faced with the prospect of having legitimate trade secret, proprietary, or protective order material disclosed to the public.
Inventors and others covered by 37 CFR 1.56(c) and 1.555 have a duty to disclose to the Office information they are aware of which is material to patentability. 37 CFR 1.56(b) states that
information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
It is incumbent upon patent applicants, therefore, to bring "material" information to the attention of the Office. It matters not whether the "material" information can be classified as a trade secret, or as proprietary material, or whether it is subject to a protective order. The obligation is the same; it must be disclosed if "material to patentability" as defined in 37 CFR 1.56(b). The same duty rests upon a patent owner under 37 CFR 1.555 whose patent is undergoing reexamination.
Somewhat the same problem faces a protestor under 37 CFR 1.291(a) who believes that trade secret, proprietary, or protective order material should be considered by the Office during the examination of an application.
In some circumstances, it may be possible to submit the information in such a manner that legitimate trade secrets, etc., will not be disclosed, e.g., by appropriate deletions of nonmaterial portions of the information. This should be done only where there will be no loss of information material to patentability under 37 CFR 1.56 or 1.555.
The provisions of this section do not relate to material appearing in the description of the patent application.
724.01 Completeness of the Patent File Wrapper [R-08.2012]
It is the intent of the Office that the patent file wrapper be as complete as possible insofar as "material" information is concerned. The Office attempts to minimize the potential conflict between full disclosure of "material" information as required by 37 CFR 1.56 and protection of trade secret, proprietary, and protective order material to the extent possible.
The procedures set forth in the following sections are designed to enable the Office to ensure as complete a patent file wrapper as possible while preventing unnecessary public disclosure of trade secrets, proprietary material, and protective order material.
724.02 Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials [R-11.2013]
Information which is considered by the party submitting the same to be either trade secret material or proprietary material, and any material subject to a protective order, must be clearly labeled as such and be filed in a sealed, clearly labeled, envelope or container. Each document or item must be clearly labeled as a "Trade Secret" document or item, a "Proprietary" document or item, or as an item or document "Subject To Protective Order." It is essential that the terms "Confidential," "Secret," and "Restricted" or "Restricted Data" not be used when marking these documents or items in order to avoid confusion with national security information documents which are marked with these terms (note also MPEP § 121). If the item or document is "Subject to Protective Order" the proceeding, including the tribunal, must be set forth on each document or item. Of course, the envelope or container, as well as each of the documents or items, must be labeled with complete identifying information for the file to which it is directed, including the Office or area to which the envelope or container is directed.
Examples of appropriate labels for such an envelope or container addressed to an application are as follows: (Appropriate changes would be made for papers filed in a reexamination file.)
A. "TRADE SECRET MATERIAL NOT OPEN TO PUBLIC. TO BE OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED U.S. PATENT AND TRADEMARK OFFICE EMPLOYEE.
DO NOT SCAN
In re Application of
Application No.
Filed:
For: (Title of Invention)
TC Art Unit:
Examiner:
B. "PROPRIETARY MATERIAL NOT OPEN TO PUBLIC. TO BE OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED U.S. PATENT AND TRADEMARK OFFICE EMPLOYEE.
DO NOT SCAN
In re Application of
Application No.
Filed:
For: (Title of Invention)
TC Art Unit:
Examiner:
C. "MATERIAL SUBJECT TO PROTECTIVE ORDER — NOT OPEN TO PUBLIC. TO BE OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED U.S. PATENT AND TRADEMARK OFFICE EMPLOYEE.
DO NOT SCAN
Tribunal Issuing Protective Order:
Civil Action or Other Identification No.:
Date of Order:
Current Status of Proceeding: (Pending, Stayed, etc.)
In re application of:
Application No.
Filed:
For: (Title of Invention)
TC Art Unit:
Examiner:
The envelope or container must be accompanied by a transmittal letter which also contains the same identifying information as the envelope or container. The transmittal letter must also state that the materials in the envelope or container are considered trade secrets or proprietary, or are subject to a protective order, and are being submitted for consideration under MPEP § 724. A petition under 37 CFR 1.59 and fee therefor (37 CFR 1.17(g) ) to expunge the information, if found not to be material to patentability, should accompany the envelope or container.
In order to ensure that such an envelope or container is not mishandled, either prior to reaching the Office, or in the Office, the envelope or container should be hand-carried to the Customer Window located at:
U.S. Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
The envelope or container may also be mailed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
Upon receipt of the envelope or container, the Office will place the envelope or container in an Artifact folder.
724.03 Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02 [R-11.2013]
The types of materials or information contemplated for submission under MPEP § 724.02 include information "material to patentability" but does not include information favorable to patentability. Thus, any trade secret, proprietary, and/or protective order materials which are required to be submitted on behalf of a patent applicant under 37 CFR 1.56 or patent owner under 37 CFR 1.555 can be submitted in accordance with MPEP § 724.02. Neither 37 CFR 1.56 nor 1.555 require the disclosure of information favorable to patentability, e.g., evidence of commercial success of the invention (see 42 FR 5590). Such information should not be submitted in accordance with MPEP § 724.02. If any trade secret, proprietary, and/or protective order materials are submitted in amendments, arguments in favor of patentability, or affidavits under 37 CFR 1.130, 1.131 or 1.132, they will be made of record in the file and will not be given any special status.
Insofar as protestors under 37 CFR 1.291(a) are concerned, submissions can be made in accordance with MPEP § 724.02 before the patent application is published, if protestor or petitioner has access to the application involved. After the patent application has been published under 35 U.S.C. 122(b)(1), no protest may be filed without the express consent of the applicant. Any submission filed by a protestor must follow the requirements for service. The Office cannot ensure that the party or parties served will maintain the information secret. If the party or parties served find it necessary or desirable to comment on material submitted under MPEP § 724 before it is, or without its being, found "material to patentability," such comments should either (A) not disclose the details of the material or (B) be submitted in a separate paper under MPEP § 724.02.
724.04 Office Treatment and Handling of Materials Submitted Under MPEP § 724.02 [R-07.2015]
The exact methods of treating and handling materials submitted under MPEP § 724.02 will differ slightly depending upon whether the materials are submitted in an original application subject to the requirements of 35 U.S.C. 122 or whether the submission is made in a reissue application or reexamination file open to the public under 37 CFR 1.11(b) or (d). Prior to publication, an original application is not open to the public under 35 U.S.C. 122(a). After the application has been published under 35 U.S.C. 122(b)(1), copies of the file wrapper of the pending application are available to any member of the public who has filed a request under 37 CFR 1.14(a)(1)(ii) or (a)(1)(iii). See MPEP § 103.
If the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14, any materials submitted under MPEP § 724.02 will only be released to the public with any other application papers if no petition to expunge (37 CFR 1.59 ) was filed prior to the mailing of a notice of allowability or notice of abandonment, or if a petition to expunge was filed and the petition was denied. Prior to the mailing of the notice of allowability or notice of abandonment, the examiner will review the patent application file and determine if a petition to expunge is in the application file but not acted upon. If the application is being allowed, if the materials submitted under MPEP § 724.02 are found not to be material to patentability, the petition to expunge will be granted and the materials will be expunged. If the materials are found to be material to patentability, the petition to expunge will be denied and the materials will become part of the application record and will be available to the public upon issuance of the application as a patent. With the mailing of the notice of abandonment, if a petition to expunge has been filed, irrespective of whether the materials are found to be material to patentability, the petition to expunge will be granted and the materials expunged.
Upon receipt of the submission, the transmittal letter and the envelope or container will be date stamped and brought to the attention of the examiner or other Office employee responsible for evaluating the submission. The receipt of the transmittal letter and envelope or container will be noted on the "Contents" of the application or reexamination file. In addition, the face of the application or reexamination file will have the notation placed thereon to indicate that trade secret, proprietary, or protective order material has been filed. The location of the material will also be specified. The words "TRADE SECRET MATERIALS FILED WHICH ARE NOT OPEN TO PUBLIC" on the face of the file are sufficient to indicate the presence of trade secret material. Similar notations will be made for either proprietary or protective order materials.
724.04(a) Materials Submitted in an Application Covered by 35 U.S.C. 122 [R-10.2019]
Any materials submitted under MPEP § 724.02 in an application covered by 35 U.S.C. 122 will be treated in the following manner:
- (A) The submitted material will be maintained in the original envelope or container (clearly marked "Not Open To The Public") and will not be publicly available until a determination has been made as to whether or not the information is material to patentability. Prior to publication, an original application is not available to the public under 35 U.S.C. 122(a). After publication of the application under 35 U.S.C. 122(b)(1), where the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14, any materials submitted under MPEP § 724.02 will only be released to the public with any other application papers if no petition to expunge (37 CFR 1.59 ) was filed prior to the mailing of a notice of allowability or notice of abandonment, or if a petition to expunge was filed and the petition was denied.
- (B) If the application is to be abandoned, prior to the mailing of a notice of abandonment, the examiner will review the patent application file and determine if a petition to expunge is in the application file but not acted upon. If a petition to expunge has been filed, irrespective of whether the materials are found to be material to patentability, the petition to expunge will be granted and the materials expunged. If no petition to expunge has been filed, the materials will be available to the public under 37 CFR 1.14(a)(1)(ii) or (a)(1)(iv).
- (C) If the application is being allowed, prior to the mailing of a notice of allowability, the examiner will review the patent application file and determine if a petition to expunge is in the application file but not acted upon. The examiner, or other appropriate Office official who is responsible for considering the information, will make a determination as to whether or not any portion or all of the information submitted is material to patentability.
- (D) If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will become a part of the file history (and scanned, if the application is an Image File Wrapper (IFW) application), which upon issuance of the application as a patent would become available to the public.
- (E) If all of the submitted information is found not to be material to patentability, the petition to expunge will be granted and the information expunged.
- (F) If a petition to expunge is not filed prior to the mailing of the notice of allowability, the materials submitted under MPEP § 724.02 will be released to the public upon the issuance of the application as a patent and upon the filing of a request and the appropriate fee (37 CFR 1.14 ).
- (G) Any petition to expunge the submitted information or any portion thereof under 37 CFR 1.59(b) will be treated in accordance with MPEP § 724.05.
724.04(b) Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b) [R-08.2012]
Any materials submitted under MPEP § 724.02 in a reissue application open to the public under 37 CFR 1.11(b) will be treated in the following manner:
- (A) Materials submitted under MPEP § 724.02 will only be released to the public with any other application papers if no petition to expunge (37 CFR 1.59 ) was filed prior to the mailing of a notice of allowability or notice of abandonment, or if a petition to expunge was filed and the petition was denied. The submitted information will be maintained separate from the reissue application file and will not be publicly available until a determination has been made as to whether or not the information is material to patentability.
- (B) If the reissue application is to be abandoned, prior to the mailing of a notice of abandonment, the examiner will review the reissue application file and determine if a petition to expunge is in the reissue application file but not acted upon. If a petition to expunge has been filed, irrespective of whether the materials are found to be material to patentability, the petition to expunge will be granted and the materials expunged. If no petition to expunge has been filed, the materials will be available to the public under 37 CFR 1.11(b).
- (C) If the reissue application is being allowed, prior to the mailing of a notice of allowability, the examiner will review the reissue application file and determine if a petition to expunge is in the reissue application file but not acted upon. The examiner, or other appropriate Office official who is responsible for considering the information, will make a determination as to whether or not any portion or all of the information submitted is material to patentability.
- (D) If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will thereafter become a permanent part of the reissue application file and open to the public. Where a submission containing protected material is found to be material to patentability, it still may be possible to redact the submission to eliminate the protected material while retaining the important material (e.g., where a confidential identifying number, such as a serial number or social security number, is included, which is not needed for the context of the submission). If so, the redacted version may be submitted to the Office along with a petition under 37 CFR 1.182 requesting that the unredacted version be sealed and be replaced with the redacted version.
- (E) If any portion or all of the submitted information is found not to be material to patentability, the petition to expunge will be granted and the information expunged.
- (F) If a petition to expunge is not filed prior to the mailing of the notice of allowability, the materials submitted under MPEP § 724.02 will become a permanent part of the reissue application file and open to the public under 37 CFR 1.11(b).
- (G) Any petition to expunge a portion or all of the submitted information will be treated in accordance with MPEP § 724.05.
724.04(c) Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d) [R-08.2012]
Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner:
- (A) Any materials, i.e., information, properly submitted under MPEP § 724.02 in a reexamination proceeding will be sealed from public view. The submitted information will be maintained separate from the reexamination file and will not be publicly available until a determination has been made as to whether or not the information is material to patentability. A petition to expunge (37 CFR 1.59 ) should accompany the submission of proprietary materials, and in any event, must be filed prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of a Notice of Intent to Issue Reexamination Certificate (NIRC). If the petition to expunge is not filed in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process, or the petition is filed, and denied/dismissed, then the materials submitted under MPEP § 724.02 will be released to the public with any other papers in the reexamination file.
- (B) Prior to the mailing of a NIRC, the examiner will review the reexamination file and determine if a petition to expunge is in the reexamination file but not acted upon. The examiner, or other appropriate Office official who is responsible for considering the information, will make a determination as to whether or not any portion or all of the information submitted is material to patentability.
- (C) If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will thereafter become a permanent part of the reexamination file and open to the public. Where a submission containing protected material is found to be material to patentability, it still may be possible to redact the submission to eliminate the protected material while retaining the important material (e.g., where a confidential identifying number, such as a serial number or social security number, is included, which is not needed for the context of the submission). If so, the redacted version may be submitted to the Office along with a petition under 37 CFR 1.182 requesting that the unredacted version be sealed and be replaced with the redacted version.
- (D) If all of the submitted information is found not to be material to patentability, the petition to expunge will be granted and the information expunged. If a portion of the submitted information is found not to be material to patentability, and a portion is found to be material to patentability, the petition to expunge will be dismissed, and patent owner (or the requester, in limited instances where appropriate) provided with an opportunity to separate the material and non-material information, such that the non-material information can be expunged. See item (C) above.
- (E) If a petition to expunge is not filed prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of the NIRC, the materials submitted under MPEP § 724.02 will become a permanent part of the reexamination file and open to the public under 37 CFR 1.11(d). In the event materials have already been made of record by a party, and it is subsequently determined that the materials are protected, the proper petition to submit would be a petition to seal the protected material under 37 CFR 1.182, with the requisite fee.
- (F) Any petition to expunge a portion or all of the submitted information under 37 CFR 1.59(b) will be treated in accordance with MPEP § 724.05.
724.05 Petition To Expunge Information or Copy of Papers in Application File [R-07.2015]
I. INFORMATION SUBMITTED UNDER MPEP § 724.02
A petition under 37 CFR 1.59(b) to expunge information submitted under MPEP § 724.02, or that should have been submitted under MPEP § 724.02 (as where proprietary information is submitted in an information disclosure statement but inadvertently not submitted in a sealed envelope as discussed in MPEP § 724.02) will be entertained only if the petition fee (37 CFR 1.17(g) ) is filed and the information has been found not to be material to patentability. If the information is found to be material to patentability, any petition to expunge the information will be denied. Any such petition to expunge information submitted under MPEP § 724.02 should be submitted at the time of filing the information under MPEP § 724.02 and directed to the Technology Center (TC) to which the application is assigned. Such petition must contain:
- (A) a clear identification of the information to be expunged without disclosure of the details thereof;
- (B) a clear statement that the information to be expunged is trade secret material, proprietary material, and/or subject to a protective order, and that the information has not been otherwise made public;
- (C) a commitment on the part of the petitioner to retain such information for the period of enforceability of any patent with regard to which such information is submitted;
- (D) a statement that the petition to expunge is being submitted by, or on behalf of, the party in interest who originally submitted the information;
- (E) the fee as set forth in 37 CFR 1.17(g) for a petition under 37 CFR 1.59(b).
Any such petition to expunge should accompany the submission of the information and, in any event, must be submitted in sufficient time that it can be acted on prior to the mailing of a notice of allowability or a notice of abandonment for original and reissue applications, or prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of a Notice of Intent to Issue Reexamination Certificate (NIRC) for reexamination proceedings. Timely submission of the petition is, accordingly, extremely important. If the petition does not accompany the information when it is initially submitted, the petition should be submitted while the application or reexamination is pending in the Technology Center (TC) and before it is transmitted to the Publishing Division. If a petition to expunge is not filed prior to the mailing of a notice of allowability or a notice of abandonment for original and reissue applications, or prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of a NIRC for reexamination proceedings, any material then in the file will remain therein and be open to the public in accordance with 37 CFR 1.14. Accordingly, it is important that both the submission of any material under MPEP § 724.02 and the submission of any petition to expunge occur as early as possible during the examination process. The decision will be held in abeyance and be decided upon the close of prosecution on the merits.
II. INFORMATION UNINTENTIONALLY SUBMITTED IN APPLICATION
A petition to expunge information unintentionally submitted in an application (other than information forming part of the original disclosure) may be filed under 37 CFR 1.59(b), provided that:
- (A) the Office can effect such return prior to the issuance of any patent on the application in issue;
- (B) it is stated that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted;
- (C) the information has not otherwise been made public;
- (D) there is a commitment on the part of the petitioner to retain such information for the period of any patent with regard to which such information is submitted;
- (E) it is established to the satisfaction of the Director that the information to be returned is not material information under 37 CFR 1.56; and
- (F) the petition fee as set forth in 37 CFR 1.17(g) is included.
A request to expunge information that has not been clearly identified as information that may be later subject to such a request by marking and placement in a separate sealed envelope or container shall be treated on a case-by-case basis. Applicants should note that unidentified information that is a trade secret, proprietary, or subject to a protective order that is submitted in an Information Disclosure Statement may inadvertently be placed in an Office prior art search file by the examiner due to the lack of such identification and may not be retrievable.
III. INFORMATION SUBMITTED IN INCORRECT APPLICATION
37 CFR 1.59(b) also covers the situation where an unintended heading has been placed on papers so that they are present in an incorrect application file. In such a situation, a petition should request that the papers be expunged rather than transferred to the correct application file. The grant of such a petition will be governed by the factors enumerated in paragraph II of this section in regard to the unintentional submission of information. Where the Office can determine the correct application file that the papers were actually intended for, based on identifying information in the heading of the papers (e.g., application number, filing date, title of invention and inventor(s) name(s)), the Office will transfer the papers to the correct application file for which they were intended without the need of a petition. However, 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.
IV. INFORMATION FORMING PART OF THE ORIGINAL DISCLOSURE
A petition to expunge a part of the original disclosure must be filed under 37 CFR 1.183, since such a request requires a waiver of the requirements of 37 CFR 1.59(a). Petitions under 37 CFR 1.183 should be directed to the Office of Petitions. The petition must explain why justice requires waiver of the rules to permit the requested material to be expunged. It should be noted that petitions to expunge information which is a part of the original disclosure, such as the specification and drawings, will ordinarily not be favorably entertained. The original disclosures of applications are scanned for record keeping purposes. Accordingly, the grant of a petition to expunge information which is part of the original disclosure would require that the USPTO record of the originally filed application be changed, which may not be possible.
724.06 Handling of Petitions To Expunge Information or Copy of Papers in Application File [R-07.2015]
37 C.F.R. 1.59 Expungement of information or copy of papers in application file.
- (a)
- (1) Information in an application will not be expunged, except as provided in paragraph (b) of this section or § 41.7(a) or § 42.7(a) of this title.
- (2) Information forming part of the original disclosure (i.e., written specification including the claims, drawings, and any preliminary amendment present on the filing date of the application) will not be expunged from the application file.
- (b) An applicant may request that the Office expunge information, other than what is excluded by paragraph (a)(2) of this section, by filing a petition under this paragraph. Any petition to expunge information from an application must include the fee set forth in § 1.17(g) and establish to the satisfaction of the Director that the expungement of the information is appropriate in which case a notice granting the petition for expungement will be provided.
- (c) Upon request by an applicant and payment of the fee specified in § 1.19(b), the Office will furnish copies of an application, unless the application has been disposed of (see §§ 1.53(e), (f) and (g) ). The Office cannot provide or certify copies of an application that has been disposed of.
37 CFR 1.59 provides that information, other than the original disclosure of the application, may be expunged from the file wrapper provided a petition to expunge under 37 CFR 1.59(b) and the required fee set forth in 37 CFR 1.17(g) are filed, and further that petitioner has established to the satisfaction of the Director that the return of the information is appropriate. Expungement of information that was originally submitted to the Office under MPEP § 724.02, or that should have been submitted in a sealed envelope as discussed in MPEP § 724.02, is appropriate when the petitioner complies with items (A)-(E) set forth in MPEP § 724.05, paragraph I, and the examiner or other appropriate Office official who is responsible for considering the information has determined that the information is not material to patentability. Expungement of information that was inadvertently submitted to the Office is appropriate provided that items (A)-(F) set forth in MPEP § 724.05, paragraph II, are satisfied. See also MPEP § 724.
Where the information to be expunged was not submitted pursuant to MPEP § 724.02 or as part of an Information Disclosure Statement, the petition should be sent to the Office of Petitions for decision.
The decision on the petition to expunge should be held in abeyance until the application is allowed or an Ex parte Quayle action, or a Notice of Abandonment is mailed, at which time the petition will be decided. However, where it is clear that the information was submitted in the wrong application, then the decision on the petition should not be held in abeyance. See MPEP § 724.05, paragraph III. In a pending application that has not been allowed or in which an Ex parte Quayle action has not been mailed, the examiner may not have finally considered what is material to a decision of patentability of the claims. Petitioner may be notified that the decision on the petition under 37 CFR 1.59(b) to expunge information in an application will be held in abeyance and be decided upon allowance of the application, or the mailing of an Ex parte Quayle action or a Notice of Abandonment using form paragraph 7.204.
¶ 7.204 Petition Under 37 CFR 1.59(b) To Expunge Information: Decision Held in Abeyance
In re Application of [1] : Appl. No.: [2] : RESPONSE TO PETITION Filed: [3] : UNDER 37 CFR 1.59 For: [4] :
This is a response to the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.
The decision on the petition will be held in abeyance until allowance of the application or mailing of an Ex parte Quayle action or a Notice of Abandonment, at which time the petition will be decided.
Petitioner requests that a document entitled [6], filed [7], be expunged from the record. Petitioner states either: (A) that the information contains trade secret material, proprietary material and/or material that is subject to a protective order which has not been made public; or (B) that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted, and the information has not otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been paid.
The decision on the petition is held in abeyance because prosecution on the merits is not closed. Accordingly, it is not appropriate to make a final determination of whether or not the material requested to be expunged is "material," with "materiality" being defined as any information which the examiner considers as being important to a determination of patentability of the claims. Thus, the decision on the petition to expunge must be held in abeyance at this time.
During prosecution on the merits, the examiner will determine whether or not the identified document is considered to be "material." If the information is not considered by the examiner to be material, the information will be removed from the official file.
Examiner Note:
1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement.
2. The petition should be sent to the Office of Petitions for decision if:
(a) the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59. Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
(b) the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
3. This decision is printed with the USPTO letterhead.
4. In bracket 6, clearly identify the document which petitioner requests to expunge. For example, refer to the author and title of the document.
5. Mail with PTO-90C cover sheet.
When an application has been allowed, an Ex parte Quayle action has been mailed, or an application is abandoned, a petition to expunge should be decided by a TC Director (see MPEP § 1002.02(c)). At this time a determination must be made as to whether the information in question is material. Form paragraph 7.205 should be used to grant a petition to expunge, whereas form paragraphs 7.206 - 7.213 should be used to dismiss such a petition.
¶ 7.205 Petition Under 37 CFR 1.59(b) To Expunge Information Granted
In re Application of [1] : Appl. No.: [2] : DECISION ON PETITION Filed: [3] : UNDER 37 CFR 1.59 For: [4] :
This is a decision on the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.
The petition is granted.
Petitioner requests that a document entitled [6], filed [7], be expunged from the record. Petitioner states that either (A) that the information contains trade secret material, proprietary material and/or material that is subject to a protective order which has not been made public; or (B) that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted, and the information has not otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been paid.
The information in question has been determined by the undersigned to not be material to the examination of the instant application.
Applicant is required to retain the expunged material(s) for the life of any patent which issues on the above-identified application.
The expunged material has been removed from the official file.
Enclosure: [8]
Examiner Note:
1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Furthermore, a petition to expunge may not be granted unless the application has been allowed or is abandoned, or an Ex Parte Quayle action has been mailed.
2. The petition should be sent to the Office of Petitions for decision if:
(a) the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59. Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
(b) the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
3. This decision is printed with the USPTO letterhead.
4. In brackets 6 and 8, clearly identify the expunged document. For example, refer to the author and title of the document.
5. Mail with PTO-90C cover sheet.
¶ 7.206 Petition Under 37 CFR 1.59(b) To Expunge Information Dismissed
In re Application of [1] : Appl. No.: [2] : DECISION ON PETITION Filed: [3] : UNDER 37 CFR 1.59 For: [4] :
This is a decision on the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.
The petition is dismissed.
Petitioner requests that a document entitled [6], filed [7], be expunged from the record.
"Materiality" is defined as any information which the examiner considers as being important to a determination of patentability of the claims.
The petition is deficient because: [8]
Examiner Note:
1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. However, the petition should not be granted until the application has been allowed or abandoned, or an Ex parte Quayle action has been mailed.
2. The petition should be sent to the Office of Petitions for decision if:
(a) the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59. Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
(b) the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
3. This decision is printed with the USPTO letterhead.
4. In bracket 6, clearly identify the document which petitioner requests to expunge. For example, refer to the author and title of the document.
5. This form paragraph must be followed with one or more of form paragraphs 7.207 through 7.213.
¶ 7.207 Petition To Expunge, Conclusion, Lacks Fee
the petition was not accompanied by the required fee under 37 CFR1.17(g).
¶ 7.208 Petition to Expunge, Conclusion, Material to Determination of Patentability
the information that petitioner requests to expunge is considered to be material to the determination of patentability because [1].
Examiner Note:
In bracket 1, provide an explanation of basis for conclusion that information is material to the determination of patentability.
¶ 7.209 Petition To Expunge, Conclusion, Information Made Public
the information has been made public. [1]
Examiner Note:
In bracket 1, provide explanation of basis for conclusion that information has been made public.
¶ 7.210 Petition to Expunge, Conclusion, No Commitment to Retain Information
the petition does not contain a commitment on the part of petitioner to retain the information to be expunged for the period of any patent with regard to which such information is submitted.
¶ 7.211 Petition to Expunge, Conclusion, No Clear Statement That Information is Trade Secret, Proprietary, and/or Subject to Protective Order, or that Submission Was Unintentional
the petition does not contain a clear statement that the information requested to be expunged is either: (1) a trade secret, proprietary, and/or subject to a protective order; or (2) was unintentionally submitted and failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted. [1]
Examiner Note:
In bracket 1, indicate whether any such statement was provided and, if so, explain why such statement is not clear.
¶ 7.212 Petition to Expunge, Conclusion, No Clear Identification of Information to be Expunged
the petition does not clearly identify the information requested to be expunged. [1]
Examiner Note:
In bracket 1, explain why the identification of the information requested to be expunged is not clear.
¶ 7.213 Petition to Expunge, Conclusion, No Statement That Petition Is Submitted By, or on Behalf of, Party in Interest Who Originally Submitted the Information
the petition does not contain a statement that the petition is being submitted by, or on behalf of, the party in interest who originally submitted the information.