Chapter 1700 Miscellaneous

Office Personnel Not To ExpressOpinion on Validity, Patentability, orEnforceability of Patent

1701

Office Personnel Not To Testify1701.01Restrictions on Practice in PatentMatters

1702

The Official Gazette1703Application Records and Reports1704Examiner Docket, Time, and ActivityRecordation

1705

[Reserved]1706-1710U.S.-Philippines Search Exchange1711[Reserved]1712-1719Dissemination of Court and Board ofPatent Appeals and InterferencesDecisions

1720

Treatment of Court and Board ofPatent Appeals and Interferences

1721

Decisions Affecting Patent andTrademark Office Policy and Practice[Reserved]1722-1729Information Sources1730

[ Editor Note: This chapter was not substantivelyrevised for the Ninth Edition of the MPEP. Eachsection has a revision indicator of “[R-08.2012],”meaning that the section as reproduced in thisEdition is the version in force in August 2012 withthe following exceptions: 1) As a result of thepublication process, form paragraphs reproducedin this chapter reflect the text used by examinerseffective November 2013 rather than those in forcein August 2012; 2) The marks indicating added ordeleted text from prior revisions have been removed;and 3) The notation “[Reserved]” has been addedfor section numbers previously missing in thehierarchy (i.e., section numbers that were never usedor no longer have text). See the ninth revision of theEighth Edition of the MPEP published August 2012as posted on the USPTO Web site on the MPEPA r c h i v e s p a g e(http://www.uspto.gov/web/offices/pac/mpep/old/index.htm)

for the text of form paragraphs in force in August2012 and the prior revision marks.]

1701 Office Personnel Not To ExpressOpinion on Validity, Patentability, orEnforceability of Patent [R-08.2012]

Not Every patent is presumed to be valid. 35 U.S.C.282, first sentence. Public policy demands that everyemployee of the United States Patent and TrademarkOffice (USPTO) refuse to express to any person anyopinion as to the validity or invalidity of, or thepatentability or unpatentability of any claim in anyU.S. patent, except to the extent necessary to carryout

(A) an examination of a reissue application ofthe patent,

(B) a reexamination proceeding to reexaminethe patent, or

(C) an interference involving the patent.

The question of validity or invalidity is otherwiseexclusively a matter to be determined by a court.Likewise, the question of enforceability orunenforceability is exclusively a matter to bedetermined by a court. Members of the patentexamining corps are cautioned to be especially waryof any inquiry from any person outside the USPTO,including an employee of another U.S. Governmentagency, the answer to which might indicate that aparticular patent should not have issued. No USPTOemployee may pursue a bounty offered by a privatesector source for identifying prior art. Theacceptance of payments from outside sources forprior art search activities may subject the employeeto administrative disciplinary action.

When a field of search for an invention is requested,examiners should routinely inquire whether theinvention has been patented in the United States. Ifthe invention has been patented, no field of searchshould be suggested.

Employees of the USPTO, particularly patentexaminers who examined an application whichmatured into a patent or a reissued patent or whoconducted a reexamination proceeding, should notdiscuss or answer inquiries from any person outsidethe USPTO as to whether or not a certain referenceor other particular evidence was considered during

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the examination or proceeding and whether or not aclaim would have been allowed over that referenceor other evidence had it been considered during theexamination or proceeding. Likewise, employeesare cautioned against answering any inquiryconcerning any entry in the patent or reexaminationfile, including the extent of the field of search andany entry relating thereto. The record of the file ofa patent or reexamination proceeding must speak foritself.

Practitioners shall not make improper inquiries ofmembers of the patent examining corps. Inquiriesfrom members of the public relating to the mattersdiscussed above must of necessity be refused andsuch refusal should not be considered discourteousor an expression of opinion as to validity,patentability or enforceability.

The definitions set forth in 37 CFR 104.1 and theexceptions in 37 CFR 104.21 are applicable to thissection.

1701.01 Office Personnel Not To Testify[R-08.2012]

It is the policy of the United States Patent andTrademark Office (USPTO) that its employees,including patent examiners, will not appear aswitnesses or give testimony in legal proceedings,except under the conditions specified in 37 CFRPart 104, Subpart C. The definitions set forth in37 CFR 104.1 and the exceptions in 37 CFR 104.21are applicable to this section. Any employee whotestifies contrary to this policy will be dismissed orremoved.

Whenever an employee of the USPTO, including apatent examiner, is asked to testify or receives asubpoena, the employee shall immediately notifythe Office of the USPTO General Counsel. Inquiriesrequesting testimony shall be also referredimmediately to the Office of the USPTO GeneralCounsel.

Any individual desiring the testimony of anemployee of the USPTO, including the testimonyof a patent examiner or other quasi-judicial

employee, must comply with the provisions of 37CFR Part 104, Subpart C.

A request by a third party to take depositiontestimony of a patent examiner in a pending ex partereexamination proceeding will generally be deniedin view of the ex parte nature of the reexaminationproceeding.

A request for testimony of an employee of theUSPTO should be made to the Office of the USPTOGeneral Counsel at least 10 working days prior tothe date of the expected testimony.

Patent examiners and other USPTO employeesperforming or assisting in the performance ofquasi-judicial functions, are forbidden to testify asexperts or to express opinions as to the validity ofany patent.

If an employee is authorized to testify, the employeewill be limited to testifying about facts within theemployee’s personal knowledge. Employees areprohibited from giving expert or opinion testimony. Fischer & Porter Co. v. Corning Glass Works, 61F.R.D. 321, 181 USPQ 329 (E.D. Pa. 1974).Likewise, employees are prohibited from answeringhypothetical or speculative questions. In reMayewsky, 162 USPQ 86, 89 (E.D. Va. 1969)(deposition of an examiner must be restricted torelevant matters of fact and must avoid anyhypothetical or speculative questions or conclusionsbased thereon); ShafferTool Works v. Joy Mfg. Co.,167 USPQ 170 (S.D. Tex. 1970) (deposition ofexaminer should be limited to matters of fact andmust not go into hypothetical or speculative areasor the bases, reasons, mental processes, analyses, orconclusions of the examiner in acting upon a patentapplication). Employees will not be permitted togive testimony with respect to subject matter whichis privileged. Several court decisions limit testimonywith respect to quasi-judicial functions performedby employees. Those decisions include UnitedStates v. Morgan, 313 U.S. 409, 422 (1941)(improper to inquire into mental processes ofquasi-judicial officer or to examine the manner andextent to which the officer considered anadministrative record); Western Electric Co. v. PiezoTechnology, Inc., 860 F.2d 428, 8 USPQ2d 1853(Fed. Cir. 1988) (patent examiner may not be

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MANUAL OF PATENT EXAMINING PROCEDURE1701.01

compelled to answer questions which probe theexaminer’s technical knowledge of the subject matterof a patent); McCulloch Gas Processing Co. v.Department of Energy, 650 F.2d 1216, 1229 (Temp.Emer. Ct. App. 1981) (discovery of degree ofexpertise of individuals performing governmentalfunctions not permitted); In re Nilssen, 851 F.2d1401, 7 USPQ2d 1500 (Fed. Cir. 1988) (technicalor scientific qualifications of examiners-in-chief arenot legally relevant in appeal under 35 U.S.C. 134since board members need not be skilled in the artto render obviousness decision); Lange v.Commissioner, 352 F. Supp. 166, 176 USPQ 162(D.D.C. 1972) (technical qualifications ofexaminers-in-chief not relevant in 35 U.S.C. 145action).

In view of the discussion above, if an employee isauthorized to testify in connection with theemployee’s involvement or assistance in aquasi-judicial proceeding which took place beforethe USPTO, the employee will not be permitted togive testimony in response to questions that theOffice determines are impermissible. Impermissiblequestions include, but are not limited to, questionsdirected to discovering the mental processes orexpertise of a quasi-judicial official, such as:

(A) Information about that employee’s: (1) Background;

(2) Expertise;(3) Qualifications to examine or otherwise

consider a particular patent or trademark application;(4) Usual practice or whether the employee

followed a procedure set out in any Office manualof practice (including the MPEP or TMEP) in aparticular case;

(5) Consultation with another Officeemployee;

(6) Understanding of: (a) A patentedinvention, an invention sought to be patented, orpatent application, patent, reexamination orinterference file;

(b) Prior art;(c) Registered subject matter, subject

matter sought to be registered, or a trademarkapplication, registration, opposition, cancellation,interference, or concurrent use file;

(d) Any Office manual of practice;(e) Office regulations;(f) Patent, trademark, or other law; or

(g) The responsibilities of another Officeemployee;

(7) Reliance on particular facts orarguments;

(B) To inquire into the manner in and extent towhich the employee considered or studied materialin performing a quasi-judicial function; or

(C) To inquire into the bases, reasons, mentalprocesses, analyses, or conclusions of that Officeemployee in performing the quasi-judicial function.

Any request for testimony addressed or delivered tothe Office of the USPTO General Counsel shallcomply with 37 CFR 104.22(c). All requests mustbe in writing . The need for a subpoena may beobviated where the request complies with 37 CFR104.22(c) if the party requesting the testimonyfurther meets the following conditions:

(A) The party requesting the testimonyidentifies the civil action or other legal proceedingfor which the testimony is being taken. Theidentification shall include the: (1) Style of the case;

(2) Civil action number;(3) District in which the civil action is

pending;(4) Judge assigned to the case; and(5) Name, address, and telephone number

of counsel for all parties in the civil action.(B) The party agrees not to ask questions

seeking information which is precluded by 37 CFR104.23;

(C) The party shall comply with applicableprovisions of the Federal Rules of Civil Procedure,including Rule 30, and give 10 working days noticeto the Office of the USPTO General Counsel priorto the date a deposition is desired. Fifteen workingdays notice is required for any deposition which isdesired to be taken between November 15 andJanuary 15;

(D) The party agrees to notice the deposition ata place convenient to the USPTO. The ConferenceRoom in the Office of the USPTO General Counselis deemed to be a place convenient to the Office;and

(E) The party agrees to supply a copy of thetranscript of the deposition to the USPTO for itsrecords.

Absent a written agreement meeting the conditionsspecified in paragraphs (A) through (E), a party mustcomply with the precise terms of 37 CFR 104.22(c)

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and the USPTO will not permit a deposition withoutissuance of a subpoena.

1702 Restrictions on Practice in PatentMatters [R-08.2012]

37 CFR 11.10 Restrictions on practice in patent matters.(a) Only practitioners who are registered under § 11.6 or

individuals given limited recognition under § 11.9(a) or (b) are permittedto prosecute patent applications of others before the Office; or representothers in any proceedings before the Office.

(b) Post employment agreement of former Office employee. Noindividual who has served in the patent examining corps or elsewherein the Office may practice before the Office after termination of his orher service, unless he or she signs a written undertaking agreeing:(1) To not knowingly act as agent or attorney for, or otherwise represent,or assist in any manner the representation of, any other person:(i) Beforethe Office,

(ii) In connection with any particular patent or patentapplication,

(iii) In which said employee participated personallyand substantially as an employee of the Office; and

(2) To not knowingly act within two years after terminatingemployment by the Office as agent or attorney for, or otherwiserepresent, or assist in any manner the representation of any otherperson:(i) Before the Office,

(ii) In connection with any particular patent or patentapplication,

(iii) If such patent or patent application was pendingunder the employee’s official responsibility as an officer or employeewithin a period of one year prior to the termination of such responsibility.

(3) The words and phrases in paragraphs (b)(1) and (b)(2)of this section are construed as follows:"" (i) Represent and representation mean acting as patent attorney or patent agent or otherrepresentative in any appearance before the Office, or communicatingwith an employee of the Office with intent to influence.

(ii) Assist in any manner means aid or help anotherperson on a particular patent or patent application involvingrepresentation.

(iii) Particular patent or patent application meansany patent or patent application, including, but not limited to, aprovisional, substitute, international, continuation, divisional,continuation-in-part, or reissue patent application, as well as any protest,reexamination, petition, appeal, or interference based on the patent orpatent application.

(iv) Participate personally and substantially. (A) Basicrequirements. The restrictions of § 11.10(a)(1) apply only to thosepatents and patent applications in which a former Office employee had“personal and substantial participation,” exercised “through decision,approval, disapproval, recommendation, the rendering of advice,investigation or otherwise.” To participate personally means directly,and includes the participation of a subordinate when actually directedby the former Office employee in the patent or patent application. Substantially means that the employee’s involvement must be ofsignificance to the matter, or form a basis for a reasonable appearanceof such significance. It requires more than official responsibility,knowledge, perfunctory involvement, or involvement on anadministrative or peripheral issue. A finding of substantiality should bebased not only on the effort devoted to a patent or patent application,but also on the importance of the effort. While a series of peripheralinvolvements may be insubstantial, the single act of approving orparticipation in a critical step may be substantial. It is essential that theparticipation be related to a “particular patent or patent application.”( See paragraph (b)(3)(iii) of this section.)(B) Participation on ancillarymatters. An Office employee’s participation on subjects not directlyinvolving the substantive merits of a patent or patent application maynot be “substantial,” even if it is time-consuming. An employee whoseofficial responsibility is the review of a patent or patent application

solely for compliance with administrative control or budgetaryconsiderations and who reviews a particular patent or patent applicationfor such a purpose should not be regarded as having participatedsubstantially in the patent or patent application, except when suchconsiderations also are the subject of the employee’s proposedrepresentation.

(C) Role of official responsibility in determiningsubstantial participation. Official responsibility is defined in paragraph(b)(3)(v) of this section. “Personal and substantial participation” isdifferent from “official responsibility.” One’s responsibility may,however, play a role in determining the “substantiality” of an Officeemployee’s participation.

(v) Official responsibility means the directadministrative or operating authority, whether intermediate or final, andeither exercisable alone or with others, and either personally or throughsubordinates, to approve, disapprove, or otherwise direct Governmentactions.(A) Determining official responsibility. Ordinarily, those areasassigned by statute, regulation, Executive Order, job description, ordelegation of authority determine the scope of an employee’s “officialresponsibility”. All particular matters under consideration in the Officeare under the “official responsibility” of the Director of the Office, andeach is under that of any intermediate supervisor having responsibilityfor an employee who actually participates in the patent or patentapplication within the scope of his or her duties. A patent examinerwould have “official responsibility” for the patent applications assignedto him or her.

(B) Ancillary matters and official responsibility. Administrative authority as used in paragraph (v) of this section meansauthority for planning, organizing and controlling a patent or patentapplication rather than authority to review or make decisions on ancillaryaspects of a patent or patent application such as the regularity ofbudgeting procedures, public or community relations aspects, or equalemployment opportunity considerations. Responsibility for such anancillary consideration does not constitute official responsibility for theparticular patent or patent application, except when such a considerationis also the subject of the employee’s proposed representation.

(C) Duty to inquire. In order for a formeremployee, e.g., former patent examiner, to be barred from representingor assisting in representing another as to a particular patent or patentapplication, he or she need not have known, while employed by theOffice, that the patent or patent application was pending under his orher official responsibility. The former employee has a reasonable dutyof inquiry to learn whether the patent or patent application had beenunder his or her official responsibility. Ordinarily, a former employeewho is asked to represent another on a patent or patent application willbecome aware of facts sufficient to suggest the relationship of the priormatter to his or her former office, e.g., technology center, group or artunit. If so, he or she is under a duty to make further inquiry. It wouldbe prudent for an employee to maintain a record of only patentapplication numbers of the applications actually acted upon by decisionor recommendation, as well as those applications under the employee’sofficial responsibility which he or she has not acted upon.

(D) Self-disqualification. A former employee, e.g., former patent examiner, cannot avoid the restrictions of this sectionthrough self-disqualification with respect to a patent or patent applicationfor which he or she otherwise had official responsibility. However, anemployee who through self-disqualification does not participatepersonally and substantially in a particular patent or patent applicationis not subject to the lifetime restriction of paragraph (b)(1) of this section.

(vi) Pending means that the matter was in fact referredto or under consideration by persons within the employee’s area ofofficial responsibility.

(4) Measurement of the two-year restriction period. Thetwo-year period under paragraph (b)(2) of this section is measured fromthe date when the employee’s official responsibility in a particular areaends, not from the termination of service in the Office, unless the twooccur simultaneously. The prohibition applies to all particular patentsor patent applications subject to such official responsibility in theone-year period before termination of such responsibility.

(c) Former employees of the Office. This section imposesrestrictions generally parallel to those imposed in 18 U.S.C. 207(a) and

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(b)(1). This section, however, does not interpret these statutoryprovisions or any other post-employment restrictions that may apply toformer Office employees, and such former employees should not assumethat conduct not prohibited by this section is otherwise permissible.Former employees of the Office, whether or not they are practitioners,are encouraged to contact the Department of Commerce for informationconcerning applicable post-employment restrictions.

(d) An employee of the Office may not prosecute or aid in anymanner in the prosecution of any patent application before the Office.

(e) Practice before the Office by Government employees is subjectto any applicable conflict of interest laws, regulations or codes ofprofessional responsibility.

See also MPEP § 309.

1703 The Official Gazette [R-08.2012]

The Official Gazette of the United States Patent andTrademark Office (Official Gazette) is publishedelectronically every Tuesday in two sections, the Official Gazette – Patents and the Official Gazette– Trademarks.

The Official Gazette — Patents reports thereexamination certificates, reissues, plant patents,utility patents, and design patents issued andstatutory invention registrations (if any) publishedon that day. The Official Gazette — Patents (eOG:P)allows browsing through the issued patents for theweek. The eOG:P can be browsed by classificationor type of patent, for example, utility, design, andplant. Specific patents can be accessed byclass/subclass or patentee name. Links are providedto the various pages of the eOG:P:

(A) Browse by Class/Subclasspage to accesspatents by a specific classification;

(B) Classification of Patents page with linksto patents by a range of classifications;

(C) Browse Granted Patents page to access apatent by patent number or link to patents by type;

(D) Index of Patentees page to browse bynames of inventors and assignees in either acumulative alphabetical index or individual indexesby type of patent. Each patentee listing contains alink to the patent;

(E) Geographical Index of Inventors to linkto patents by the state or country of residence of thefirst listed inventor; and

(F) Notices page containing the text ofimportant notices for the week.

As to each patent, the following information is given:

(A) Patent number;(B) Title of the invention;

(C) Applicant’s name;(D) Applicant’s city and state of residence and,

if unassigned, applicant’s mailing address;(E) Assignee’s name, city and state of residence,

if assigned;(F) U.S. or PCT parent application data, if any;(G) Filing date;(H) Application number;(I) Foreign priority application data, if any;(J) International classification;(K) U.S. classification by class and subclass;(L) Number of claims;(M) Selected figure of the drawing, if any;(N) A claim or claims;(O) For reissue patents, the original patent

number and issue date, and the original applicationnumber and filing date; and

(P) Patent Application Publication Number andPublication date, if any.

The Official Gazette – Trademarks is publishedelectronically and contains an illustration of eachtrademark published for opposition, an alphabeticallist of registered trademarks, a classified list ofregistered trademarks, an index of registrants, a listof canceled trademark registrations, and a list ofrenewed trademark registrations .

The information in the Official Gazette pertainingto each issued patent and each trademark registrationcan be obtained from the Patent Grants Databaseand the U.S. Trademark Electronic Search System(TESS) respectively, both also available on theUSPTO Web site.

Regular and special notices of the United StatesPatent and Trademark Office are published in theOfficial Gazette Notices , both as part of the OfficialGazette — Patents (eOG:P) and as a separatepublication. The notices that are included in thispublication include notices of patent and trademarksuits, disclaimers filed, Certificates of Correctionissued, lists of applications and patents available forlicense or sale, notices of 37 CFR 1.47 applications,and general information such as orders, notices,changes in rules, changes in classification, certainadverse decisions in interferences, the condition ofwork in the Office, registration of attorneys andagents, reprimands, suspensions, and exclusions ofregistered attorneys and agents, and notices to partiesnot reached by mail. The Official Gazette Notices

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are available on the United States Patent andTrademark Office Web site (www.uspto.gov). Papercopies of the Official Gazette Notices are availablefrom the Government Printing Office. Orders for the Official Gazette Notices should be addressed andsubscriptions should be made payable to theSuperintendent of Documents, Government PrintingOffice, Washington, D.C. 20402.

1704 Application Records and Reports[R-08.2012]

The PALM (Patent Application Locating andMonitoring) System is the automated datamanagement system used by the United States Patentand Trademark Office (USPTO) for the retrievaland/or online updating of the computer record ofeach patent application. The PALM System alsomaintains examiner time, activity, and docketrecords, and technical support staff backlog records.

Information retrieval from PALM is by means ofthe PALM intranet. Transactions are entered via barcode readers, by keyed entries, or by making anappropriate choice in a drop down menu. Amongother items, classification, examiner docket, attorney,inventor, status, and prosecution history data as wellas the location of each paper application can beretrieved and updated online with PALM.

I. DOCKET REPORTS

The recording of changes to examiner dockets isaccomplished by PALM simultaneously with therecording of incoming and outgoingcommunications, transfers of applications to andfrom dockets, and other types of updating of theapplication record. The status of each examiner’sdocket can be determined by means of the PALMintranet and is supplemented by periodic printed orelectronic reports. Docket reports that are generatedby PALM include the individual examiner new andamended docket which lists applications as regular,special, or accelerated applications in priority order;the individual examiner rejected application docket;the individual examiner new application profile,which lists the totals of new applications in eachdocket, sorted by month of filing; and various

summaries of the above reports at the art unit,Technology Center (TC), and corps levels.

II. BIWEEKLY TIME AND ACTIVITYREPORTS

All reporting of examiner time and activity is on abiweekly basis. Each examiner’s examining andnon-examining time, as entered in the Web Timeand Attendance System is used by PALM in thecomputation of productivity data. The biweeklyreports produced include the individual BiweeklyExaminer Time and Activity Report which lists, byapplication number, all applications for whichactions have been counted during the biweeklyperiod. The type of action counted for eachapplication is also indicated on the report. This reportalso includes examiner time data, an action summary,and cumulative summaries to date for the currentquarter and fiscal year. Various summary reports atthe Art Unit, TC, and Corps levels are also produced.

1705 Examiner Docket, Time, and ActivityRecordation [R-08.2012]

Actions prepared by examiners are submittedelectronically and sent to their respective legalinstrument examiners for entry of the type of Officeaction into the PALM System and for mailing.

Each examiner’s action that is counted and reportedto the PALM system will be listed by applicationnumber on the Biweekly Examiner Time andActivity Report. The examiner should check his/herBiweekly Examiner Time and Activity Report toverify that all applications worked on for thebiweekly report period are properly listed.

Examples of examiner’s actions that are reported toPALM by the legal instrument examiner, but are notlisted on the Biweekly Examiner Time and ActivityReport, include examiner’s amendments, actions inreexamination proceedings, interview summaries,transfers of applications, and supplemental Officeactions and miscellaneous Office letters which donot set a period for reply.

Form PTO 1472. Examiner's Case Action Worksheet.

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II. COUNTING OF FIRST ACTION ON THEMERITS (FAOM)

Office actions on the merits consist of rejections(final and non-final), Ex parte Quayle actions, andallowances.

The first time an examiner performs one of the abovemerit actions, he/she receives credit or a count for aFirst Action on the Merits (FAOM) on theproduction reports.

A second/subsequent but FAOM usually occurswhen the first action is a restriction/election actionand the second action is an action on the merits. Theexaminer indicates the type of second action on theExaminer’s Case Action Worksheet, and the PALMsystem will automatically determine if it is a FAOM.If the second action is a FAOM, the action will belisted and credited on the Biweekly Examiner Timeand Activity Report as a Second/Subsequent FAOM.

III. COUNTING OF DISPOSALS

An examiner receives a “disposal” or count for thefollowing actions:

(A) Allowance;(B) Abandonment;(C) Requests for Continued Examination;(D) Examiner’s Answer;(E) International Preliminary Examination

Report;(F) Statutory Invention Registration (SIR)

disposal (only after a FAOM; see MPEP § 1101);and

(G) Interference wherein the application wouldbe in condition for allowance but for the interference.

These same items constitute the “disposals” forperformance evaluation of examining art units andTCs. However, disposals at the Office level consistonly of allowances and abandonments.

For either an allowance or an abandonment after anExaminer’s Answer or decision by a court or theBoard of Patent Appeals and Interferences, nodisposal credit is received, though these actions areindicated on the Biweekly Examiner Time andActivity Report.

IV. CORRECTION INFORMATION

(A) If any information is either missing fromor incorrect on the Biweekly Examiner Time andActivity Report, the examiner should promptly notifytheir supervisory patent examiner (SPE) and eitherthe legal instrument examiner or PALMtroubleshooter by providing all the pertinentinformation necessary to make the changes to thePALM system (e.g., examining hours, applicationnumber, type of action, etc.).

(B) The PALM troubleshooter or legalinstrument examiner will report the necessarychanges and corrections directly into PALM. Thesechanges will be listed on the next BiweeklyExaminer Time and Activity Report.

(C) If any information is missing from the lastBiweekly Examiner Time and Activity Report of aquarter (except at the end of a fiscal year) or isincorrect, the examiner should promptly notify thePALM troubleshooter or legal instrument examinerand his/her supervisory patent examiner (SPE). ThePALM troubleshooter or legal instrument examinerwill make the appropriate changes directly into thePALM system. The changes will be listed on thenext Biweekly Examiner Time and Activity Report.However, these changes will not be reflected in theprevious Quarter’s Report; the examiner’s SPE maymanually make an adjustment to the records to showthese changes.

(D) In order to ensure that all PALM reportsare correct at the end of the fiscal year (ratingperiod), a special correction cycle is provided on thePALM system. If any information is missing fromor is incorrect on the last Biweekly Examiner Timeand Activity Report, the examiner shouldimmediately notify the legal instrument examinerand his/her SPE. These changes will be reflected inthe examiner’s final biweekly report for the entirefiscal year.

1706-1710 [Reserved]

1711 U.S.-Philippines Search Exchange[R-08.2012]

The United States-Philippines search exchangeprogram involves patent applications filed in theUnited States which are subsequently followed bycorresponding applications filed in the Republic of

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the Philippines and patent applications filed in thePhilippines subsequently followed by correspondingapplications filed in the United States.

The program operates as follows:

The applicant files his or her application in theUnited States Patent and Trademark Office (USPTO)which will process the application in the normalmanner and examine the application in the usualtime sequence.

If the applicant should later file a correspondingapplication in the Philippines Patent Office, he orshe may elect to use the special filing procedure.Under this special filing procedure, applicant fileshis or her application in the Philippines accompaniedby a notice of election to participate in the specialprocedure, which notice of election contains acertification that the description (excludingreferences to related applications), claims, anddrawings are identical to those of the correspondingapplication originally filed in the United States. Theearlier filed application must be fully identified, and,in applications without a claim of priority, a certifiedcopy of the earlier filed U.S. application must besubmitted to the Philippines Patent Office. Inaddition, applicant must also agree that allamendments to his or her U.S. application will alsobe made with respect to his or her application filedin the Philippines.

In the USPTO, applicant will regularly file twocopies of each amendment. One copy must bemarked “Copy for Philippines Patent Office.” Upontermination of prosecution, the USPTO shall removeall copies so marked from the U.S. file and promptlyforward the same to the Philippines Patent Office.

Election forms for participation in this specialprogram must be signed in duplicate andsimultaneously accompany the application to be filedin the Philippines.

Upon receipt of properly filed notice of election, thePhilippines Patent Office will notify the USPTO ofthe election by forwarding one copy of the electionforms to the USPTO. The Philippines Patent Officewill defer action on the Philippines applicationpending receipt of information as to the disposition

of the application by the USPTO. If no suchinformation is received by the Philippines Officewithin a reasonable amount of time from the date offiling in the Philippines, the Philippines Office may,either on its own initiative, or at applicant’s request,inquire as to the status of the U.S. application and,if desired, proceed with its own independentexamination.

Upon disposal of the application by the USPTO,appropriate information will be sent to thePhilippines Patent Office which will include allnecessary identifying data, whether allowed orabandoned, notice of allowance, copies of documentscited during examination, a copy of the last officeaction and, when necessary, any earlier actions whichmay be included by reference in the last action. ThePhilippines Office will then make its own completeoffice action based upon the claims as amended withUSPTO, performing whatever checks desired andsearching for copending interfering applications.Alternatively, the Philippines may request applicantto show cause why the results of the U.S.examination should not be accepted in thePhilippines. All avenues of appeal will remain opento the applicant.

Where copending applications are cited and appliedduring examination in the USPTO full examinationwill not be forwarded to the Philippines PatentOffice, and the fact that a U.S. copending applicationwas cited would be noted as a matter of information,since such references are inapplicable in thePhilippines.

Where the application originates in the PhilippinesPatent Office and is subsequently filed in theUSPTO, a similar procedure as outlined above,consonant with U.S. law, will be followed.

It is believed that this program will facilitate thehandling of U.S. origin applications filed in the

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Republic of the Philippines resulting in a savings intime and expense of prosecution to U.S. applicants.

1712-1719 [Reserved]

1720 Dissemination of Court and Board ofPatent Appeals and Interferences Decisions[R-08.2012]

I. COURT DECISIONS

The Office of the Solicitor forwards to the Office ofthe Commissioner for Patents copies of all recentcourt decisions in patent cases where a precedentialopinion is issued. The Office of the Commissionerfor Patents will routinely forward these opinions toTC Directors, the Office of Patent Training, and theDirector of the Office of Patent Quality Assurance.

TC Directors, in turn, are to make copies availableto supervisors and other individuals as the TCDirector determines to be appropriate. TC Directorsare encouraged to discuss the contents of theopinions in their staff meetings, particularly wheresuch meetings are being held to reinforceexamination quality.

II. BOARD OF PATENT APPEALS ANDINTERFERENCES DECISIONS

A decision rendered by the Board of Patent Appealsand Interferences (Board) is returned to the examinerthrough the TC Director and the examiner’ssupervisor. The examiner takes action consistentwith the decision rendered by the Board unlessrehearing of the Board decision will be requested(MPEP § 1214.04). The TC Director may circulateand discuss the decision among some or all of thesupervisors in the TC, and the supervisors, in turn,may circulate the decision among the examiners intheir art units, depending on the subject matter orissues in the decisions.

1721 Treatment of Court and Board ofPatent Appeals and Interferences Decisions

Affecting Patent and Trademark OfficePolicy and Practice [R-08.2012]

In the event the Board of Patent Appeals andInterferences (Board) or court decision is one thatsignificantly adds to the body of law by, for example,addressing a new legal or procedural issue, orproviding a new interpretation of a prior decision,such a decision may result in an internal UnitedStates Patent and Trademark Office (USPTO)memorandum pointing out the significance of thedecision to the examination process.

When any examiner or supervisor in the PatentExamining Corps concludes that a recent decisionof the Board or a court affects existing USPTOpolicy or practice, he or she should bring the matterto the attention of his/her TC Director throughnormal chain-of-command procedures.

When the TC Director believes that guidance to theCorps is warranted as a result of a decision, the TCDirector should consult with the AssociateCommissioner for Patent Examination Policy andprovide a draft of the guidance that is recommendedas appropriate under the circumstances. TheAssociate Commissioner for Patent ExaminationPolicy will then consult appropriate Office officials,as necessary, to formulate a recommendation to theCommissioner for Patents on the policy implicationsof the opinion.

It may be necessary for the Director, GeneralCounsel, Solicitor, Chief Administrative PatentJudge, Commissioner for Patents, AssociateCommissioner for Patent Examination Policy,Deputy Commissioner for Patents and TC Directormaking the recommendation to meet to review anddiscuss the policy ramifications of the opinion andrecommended guidance to enable the Director todecide how the USPTO will proceed.

Communication of the decision on the policyimplications of the court or Board decision willnormally take place by either notice in the OfficialGazette and/or via memorandum to USPTOpersonnel. Ultimately, the policy implications of thedecision will be officially incorporated into theManual of Patent Examining Procedure and Office

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of Patent Training curriculum materials during thenext update cycle for these reference materials.

1722-1729 [Reserved]

1730 Information Sources [R-08.2012]

I. IN GENERAL

General information about patents, trademarks,products and services offered by the United StatesPatent and Trademark Office (USPTO), and otherrelated information is available by contacting theUSPTO Contact Center at:

800-PTO-9199 or 571-272-1000(TDD)571-272-9950

An automated message system is available 7 days aweek, 24 hours a day providing informationalresponses to frequently asked questions and theability to order certain documents. Customer servicerepresentatives are available to answer questions,send materials or connect customers with otheroffices of the USPTO from 8:30 a.m. - 8:00 p.m.EST/EDT, Monday-Friday excluding federalholidays.

For other technical patent information needs, theInventors Assistance Center can be reached throughcustomer service representatives at the abovenumbers, Monday through Friday (except federalholidays) from 8:30 a.m. to 5:00 p.m. EST/EDT.

General information can also be obtained in personfrom the Public Search Facilities of the USPTO. Seesubsection IV. below.

II. USPTO INTERNET SITE

A. General Information

The USPTO Web site (http://www.uspto.gov orftp.uspto.gov) provides a wealth of information toall users. The USPTO Web site offers links to newsand notices (such as announcements, press releases, Official Gazette Notices and Federal RegisterNotices), USPTO contacts and addresses, activitiesand education related pages (such as the PTDLprogram and the Kids Pages), patent specific

information (such as issued patents and publishedpatent applications, general information pertainingto applying for a patent, electronic filing of patentapplications, and reference materials such as theMPEP and examination guidelines), and trademarkspecific information (such as the Trademark Manualof Examining Procedure and the U.S. TrademarkElectronic Search System (TESS)). In addition, theWeb site allows downloading of a variety of USPTOforms (including PCT forms), ordering copies ofpatents and trademarks, accessing a list of all currentfees, paying patent maintenance fees, replenishingdeposit accounts, accessing various legal materials,linking to related Web sites, etc.

B. Electronic Business

The Patent Electronic Business Center (EBC) assistsUSPTO customers in filing patent applicationselectronically, submitting assignment documents forrecordation, retrieving data, checking the status ofpending actions, and submitting information andapplications. The hours of operation of the EBC areMonday through Friday 6 a.m. - midnight(EST/EDT). The EBC can be reached by telephoneat 866-217-9197 (toll-free) or 571-272-4100. TheEBC may be reached by e-mail at ebc@uspto.govand by fax at 571-273-0177.

1. USPTO Databases

(a) Issued Patents

The Patent Grants Database provides access to thefull-text of all U.S. patents issued since 1976, andto the full-page images of all U.S. patents issuedsince 1790.

(b) Published Applications

The Patent Applications Database provides bothfull-text and full-page images of all U.S. patentapplications published since March 15, 2001.

(c) Status Information

Status information relating to patent applications isavailable through the Patent Application InformationRetrieval (PAIR) system. There is both a public and

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private side to PAIR. In public PAIR, informationis available relating to issued patents, publishedpatent applications, and applications to which apatented or published application claims domesticpriority. In private PAIR, an applicant (or his or herregistered patent attorney or registered patent agent)can securely track the progress of his or herapplication(s) through the USPTO. Private PAIRmakes available information relating to unpublishedpatent applications, but the applicant must associatea Customer Number with the application to obtainaccess. See MPEP § 403 for Customer Numberpractice.

(d) Image File Wrapper (IFW)

The Image File Wrapper (IFW) system uses imagetechnology to replace the paper processing of patentapplications in the Office. Paper components of theseapplication files (including the specification, oathor declaration, drawings, information disclosurestatements, amendments, Office actions, and filejacket notations) have been scanned to createelectronic image files. For patent applications in theIFW system, the IFW file is the Official file and noaccess is granted to the original paper documentsheets used to create the IFW file. All processingand examination is conducted using the electronicimages instead of the paper source documents.

If an IFW file has been created for a patentedapplication, published application, or an applicationto which a patented or published application claimsdomestic priority, the IFW file (with the exceptionof non-patent literature) is accessible through publicPAIR. All patent applications filed after June 30,2003 have been scanned into the IFW system andwill be available in public PAIR as soon as they havebeen published or patented. Pending applicationsfiled before June 30, 2003 are scanned into IFW asincoming papers are received in the Office.Non-patent literature (NPL) may be viewed usingprivate PAIR (if an IFW file has been created) orobtained from the USPTO Office of Public Records.

Questions about IFW images viewed in PAIR shouldbe directed to the Patent EBC.

(e) Assignments on the Web (AOTW)

Assignment information is available for issuedpatents and published applications recorded sinceAugust 1980.

2. Transacting Electronic Business

(a) Filing Applications and Other Documents

The Electronic Filing System -Web (EFS-Web)allows customers to electronically file patentapplication documents securely via the Internet. SeeMPEP § 502.05 for more detailed information.

(b) Paying Fees and Replenishing DepositAccounts

The Office of Finance On-Line Shopping page maybe used to pay maintenance fees or to maintain andreplenish deposit accounts.

(c) Ordering Copies and Publications

Copies of patent applications as filed and patent filewrappers that have been issued or published areavailable on-line from the Office of Public Records(OPR). Presentation patents may also be ordered onthe web. Available service options, fees and deliverymethods vary by document type. Contact OPR at1-800-972-6382 or 571-272-3150 for moreinformation.

III. PCT

For questions and information concerning the PatentCooperation Treaty (PCT), the PCT Help Desk isavailable to provide assistance and may be reachedby telephone at 571-272-4300 between the hours of9:00 am and 4:30 pm (EST/EDT), Monday throughFriday, or by facsimile at 571-273-0419, 24 hours aday. In addition, helpful information is availablethrough the internet at the Office of PCT LegalAdministration page of the USPTO Web site and atthe World Intellectual Property Office Web site(http://www.wipo.org/).

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IV. USPTO SEARCH AND INFORMATIONRESOURCE FACILITIES

The following USPTO search and informationresource facilities are accessible to the public:

(A) Public Search Facility (Madison East, firstfloor, 600 Dulany St., Alexandria, VA 22314) at571-272-3275(Hours: Weekdays, 8:00 a.m. to 8:00p.m., EST/EDT);

(B) Scientific and Technical InformationCenter(1) Main Library (Madison West, first floor,600 Dulany St., Alexandria, VA 22314) at571-272-3547

(2) Biotech/Chemical Library (Remsen1D58) at 571-272-2520 (Hours: Weekdays, 8:30a.m. to 5:00 p.m., EST/EDT); and

(C) File Information Unit (Randolph Square,third floor, 2800 South Randolph St., Arlington, VA22206) at 703-756-1800(Hours: Weekdays, 7:00a.m. to 6:00 p.m., EST/EDT).

V. REGISTERED PRACTIONERS

The USPTO cannot recommend any particularattorney or agent, or aid in the selection of anattorney or agent. A list of Attorneys and AgentsRegistered to Practice Before the U.S. Patent andTrademark Office may be purchased on DVD-ROMfrom the USPTO’s Office of Electronic InformationProducts (571-272-5600). The DVD-ROM is alsoavailable on the USPTO Web site(http://www.uspto.gov) from the “Products andServices Catalog.”

To obtain a list of registered patent attorneys andagents for a particular area, customers may eithercontact a customer service representative throughthe USPTO Contact Center (see “In General” above),or acquire the information from the USPTO Website. The attorneys and agents list may be examinedwithout charge at Patent and Trademark DepositoryLibraries (PTDLs) and at many other librariesthroughout the U.S. Many large cities also haveassociations of patent attorneys and agents whichmay be consulted.

VI. MISCELLANEOUS

A. Recently Filed Applications

For information and questions concerning recentlyfiled patent applications and filing receipts, contactthe Application Assistance Unit at 571-272-4000(hours: weekdays, 8:30 a.m. to 5:00 p.m., EST/EDT).

B. Pre-Grant Publication

For inquiries concerning projected pre-grantpublication dates, contact the Application AssistanceUnit at 571-272-4200.

C. Status Information

For information on the status of a patent application,patent applicants who have access to PAIR shouldcheck PAIR. Alternatively, applicants may contactthe Application Assistance Unit at 571-272-4200.

D. Correspondence

For information pertaining to mail, facsimile, orhand-delivery of correspondence to the USPTO, seeMPEP §§ 502 - 502.01.

E. Copies of Documents

Inquiries regarding certified or uncertified copies ofdocuments, including patent applications-as-filed,patent related file wrappers, patent copies, andreproduced copies of individual replacement pagesor previous revisions of the MPEP, should bedirected to the Office of Public Records’ Patent andTrademark Copy Fulfillment Branch at571-272-3150 or 1-800-972-6382. Orders may beplaced by facsimile when paying by VISA®,MasterCard®, American Express®, Discover®, orUSPTO Deposit Account at 571-273-3250. To orderfile histories for self-service copying, contact theFile Information Unit at 703-756-1800.

F. Maintenance Fees

Information regarding maintenance fees may beobtained from the Patent Application InformationRetrieval (PAIR) system on the USPTO Web site,

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or by contacting the Receipts Accounting Divisionat 571-272-6500.

G. Assignments

For questions pertaining to filing assignments orother documents affecting title, contact theAssignment Division at 571-272-3350. Documentsmay be submitted to the Assignment Division byfacsimile at 571-273-0140. See MPEP § 302.09 foradditional information.

H. Petitions

For matters decided by the Office of Petitions, theappropriate USPTO personnel may be reached at571-272-3282. Petitions to withdraw an applicationfrom issue may be sent by facsimile to571-273-0025. All other facsimile transmissions tothe Office of Petitions should be sent to the CentralFAX Number 571-273-8300.

I. PatentIn

For information regarding orders for the PatentInsoftware program, call the Electronic InformationProducts Division at 571-272-5600. For assistancedownloading or using PatentIn, contact the PatentElectronic Business Center (see subsection II.B.above).

         

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