MPEP - R - United States Patent and Trademark Office

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MPEP - R - United States Patent and Trademark Office

Transcript Of MPEP - R - United States Patent and Trademark Office

Appendix R Consolidated Patent Rules - January 2022 Update

Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights

[Editor Note: Current as of December 29, 2021. The Federal Register is the authoritative source and should be consulted if a need arises to verify the authenticity of the language reproduced below. This Consolidated Rules document incorporates the following final rule actions that became effective subsequent to the publication of MPEP Revision 10.2019 (which was updated as of October 2019): (1) Patent Term Adjustment Reductions in View of the Federal Circuit Decision in Supernus Pharm., Inc. v. Iancu, 85 FR 36335, June 16, 2020, effective July 16, 2020; (2) Facilitating the Use of the World Intellectual Property Organization’s ePCT System To Prepare International Applications for Filing With the United States Receiving Office, 85 FR 61604, September 30, 2020, effective September 30, 2020; (3) Setting and Adjusting Patent Fees During Fiscal Year 2020, 85 FR 46932, August 3, 2020, effective October 2, 2020 and January 1, 2022; (4) Setting and Adjusting Patent Fees During Fiscal Year 2020, correction, 85 FR 58282, September 18, 2020, effective October 2, 2020; (5) PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 85 FR 79120, December 9, 2020, effective January 8, 2021; (6) Small Entity Government Use License Exception, 85 FR 82917, December 21, 2020, effective January 20, 2021, corrected to effective January 21, 2021, 86 FR 2542, January 13, 2021 and correction withdrawn 86 FR 3815, January 15, 2021; (7) Rules of Practice To Allocate the Burden of Persuasion on Motions To Amend in Trial Proceedings Before the Patent Trial and Appeal Board, 85 FR 82923, December 21, 2020, effective January 20, 2021, corrected to effective January 21, 2021, 86 FR 2542, January 13, 2021 and correction withdrawn 86 FR 3815, January 15, 2021; (8) Changes to Representation of Others Before the United States Patent and Trademark Office, 86 FR 28442, May 26, 2021, effective June 25, 2021; (9) Changes to Representation of Others Before the United States Patent and Trademark Office; Correction, 86 FR 32640, June 22, 2021, effective June 25, 2021; (10) Removal of Certain Rules of Patent Practice, 86 FR 35226, July 2, 2021, effective July 2, 2021; (11) Mailing Address Changes Related to USPTO Deposit Accounts and Patent Maintenance Fees, 86 FR 35229, July 2, 2021, effective July 2, 2021; (12) 2021 Increase of the Annual Limit on Accepted Requests for Track One Prioritized Examination, 86 FR 52988, September 24, 2021, effective September 24, 2021; (13) Electronic Submission of a Sequence Listing, a Large Table, or a Computer Program Listing Appendix in Patent Applications, 86 FR 57035, October 14, 2021, effective November 15, 2021; (14) Setting and Adjusting Patent Fees During Fiscal Year 2020, 86 FR 66192, November 22, 2021, effective January 1, 2023; and (15) Electronic Submission of a Sequence Listing, a Large Table, or a Computer Program Listing Appendix in Patent Applications; Correction, 86 FR 73985, December 29, 2021, effective December 29, 2021.]

CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT
OF COMMERCE SUBCHAPTER A – GENERAL
PATENTS

PART 2 RULES OF PRACTICE IN TRADEMARK CASES [See the Trademark Federal Statutes and Rules (TFSR)]
PART 3 ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
PART 4 COMPLAINTS REGARDING INVENTION PROMOTERS
PART 5 SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES
INDEX I RULES RELATING TO PATENTS

PART 1 RULES OF PRACTICE IN PATENT CASES
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MANUAL OF PATENT EXAMINING PROCEDURE

PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE
PART 10 [Reserved] PART 11 REPRESENTATION OF OTHERS BEFORE THE
UNITED STATES PATENT AND TRADEMARK OFFICE INDEX II RULES RELATING TO REPRESENTATION OF
OTHERS BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE PART 41 PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD PART 42 TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD PART 90 JUDICIAL REVIEW OF PATENT TRIAL AND APPEAL BOARD DECISIONS
SUBCHAPTER B – ADMINISTRATION
PART 102 DISCLOSURE OF GOVERNMENT INFORMATION
PART 104 LEGAL PROCESSES
SUBCHAPTER C – PROTECTION OF FOREIGN MASK WORKS
PART 150 REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT TO 17 U.S.C. 902(a)(2)
CHAPTER I — UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE
SUBCHAPTER A — GENERAL
PATENTS
PART 1 — RULES OF PRACTICE IN PATENT CASES
General Provisions
GENERAL INFORMATION AND CORRESPONDENCE
Sec. 1.1 Addresses for non-trademark
correspondence with the United States Patent and Trademark Office. 1.2 Business to be transacted in writing. 1.3 Business to be conducted with decorum and courtesy.

1.4 Nature of correspondence and signature requirements.
1.5 Identification of patent, patent application, or patent-related proceeding.
1.6 Receipt of correspondence. 1.7 Times for taking action; Expiration on
Saturday, Sunday or Federal holiday. 1.8 Certificate of mailing or transmission. 1.9 Definitions. 1.10 Filing of correspondence by Priority Mail
Express®.
RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE
1.11 Files open to the public. 1.12 Assignment records open to public
inspection. 1.12 (pre-AIA) Assignment records open to
public inspection. 1.13 Copies and certified copies. 1.14 Patent applications preserved in
confidence. 1.14 (pre-AIA) Patent applications preserved in
confidence. 1.15 [Reserved]
FEES AND PAYMENT OF MONEY
1.16 National application filing, search, and examination fees.
1.17 Patent application and reexamination processing fees.
1.18 Patent post allowance (including issue) fees.
1.19 Document supply fees. 1.20 Post-issuance fees. 1.21 Miscellaneous fees and charges. 1.22 Fees payable in advance. 1.23 Methods of payment. 1.24 [Reserved] 1.25 Deposit accounts. 1.26 Refunds. 1.27 Definition of small entities and establishing
status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office. 1.27 (pre-AIA) Definition of small entities and establishing status as a small entity to

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CONSOLIDATED PATENT RULES - JANUARY 2022 UPDATE

permit payment of small entity fees; when 1.47 [Reserved]

a determination of entitlement to small

1.47 (pre-AIA) Filing when an inventor refuses

entity status and notification of loss of

to sign or cannot be reached.

entitlement to small entity status are

1.48 Correction of inventorship pursuant to 35

required; fraud on the Office.

U.S.C. 116 or correction of the name or

1.28 Refunds when small entity status is later

order of names in a patent application,

established; how errors in small entity

other than a reissue application.

status are excused. 1.29 Micro entity status.

THE APPLICATION

National Processing Provisions

1.51 General requisites of an application. 1.52 Language, paper, writing, margins,

PROSECUTION OF APPLICATION AND

read-only optical disc specifications.

APPOINTMENT OF ATTORNEY OR AGENT

1.53 Application number, filing date, and

completion of application.

Sec.

1.53 (pre-PLT (AIA)) Application number,

1.31 Applicant may be represented by one or

filing date, and completion of application.

more patent practitioners or joint inventors. 1.53 (pre-AIA) Application number, filing date,

1.32 Power of attorney.

and completion of application.

1.32 (pre-AIA) Power of attorney.

1.54 Parts of application to be filed together;

1.33 Correspondence respecting patent

filing receipt.

applications, reexamination proceedings, 1.55 Claim for foreign priority.

and other proceedings.

1.56 Duty to disclose information material to

1.33 (pre-AIA) Correspondence respecting

patentability.

patent applications, reexamination

1.56 (pre-AIA) Duty to disclose information

proceedings, and other proceedings.

material to patentability.

1.34 Acting in a representative capacity.

1.57 Incorporation by reference.

1.36 Revocation of power of attorney;

1.57 (pre-PLT) Incorporation by reference.

withdrawal of patent attorney or agent.

1.58 Chemical and mathematical formulas and

1.36 (pre-AIA) Revocation of power of

tables.

attorney; withdrawal of patent attorney or 1.59 Expungement of information or copy of

agent.

papers in application file.

WHO MAY APPLY FOR A PATENT

1.60 [Reserved] 1.61 [Reserved]

1.41 Inventorship.

1.62 [Reserved]

1.41 (pre-AIA) Applicant for patent. 1.42 Applicant for patent.

OATH OR DECLARATION

1.42 (pre-AIA) When the inventor is dead.

1.63 Inventor’s oath or declaration.

1.43 Application for patent by a legal

1.63 (pre-AIA) Oath or declaration.

representative of a deceased or legally

1.64 Substitute statement in lieu of an oath or

incapacitated inventor.

declaration.

1.43 (pre-AIA) When the inventor is insane or 1.64 (pre-AIA) Person making oath or

legally incapacitated.

declaration.

1.44 [Reserved]

1.66 Statements under oath.

1.45 Application for patent by joint inventors. 1.66 (pre-AIA) Officers authorized to

1.45 (pre-AIA) Joint inventors.

administer oaths.

1.46 Application for patent by an assignee,

1.67 Supplemental oath or declaration.

obligated assignee, or a person who

1.67 (pre-AIA) Supplemental oath or

otherwise shows sufficient proprietary

declaration.

interest in the matter.

1.68 Declaration in lieu of oath.

1.46 (pre-AIA) Assigned inventions and patents. 1.69 Foreign language oaths and declarations.

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1.70 [Reserved]

SPECIFICATION

1.71 Detailed description and specification of the invention.
1.72 Title and abstract. 1.73 Summary of the invention. 1.74 Reference to drawings. 1.75 Claim(s). 1.76 Application data sheet. 1.76 (2012-09-16 thru 2013-12-17) Application
data sheet. 1.76 (pre-AIA) Application data sheet. 1.77 Arrangement of application elements. 1.78 Claiming benefit of earlier filing date and
cross-references to other applications. 1.79 [Reserved]

THE DRAWINGS

1.81 Drawings required in patent application. 1.81 (2012-09-16 thru 2013-12-17) Drawings
required in patent application. 1.81 (pre-AIA) Drawings required in patent
application. 1.83 Content of drawing. 1.84 Standards for drawings. 1.85 Corrections to drawings. 1.88 [Reserved]

MODELS, EXHIBITS, SPECIMENS

1.91 Models or exhibits not generally admitted as part of application or patent.
1.92 [Reserved] 1.93 Specimens. 1.94 Return of models, exhibits or specimens. 1.95 Copies of exhibits. 1.96 Submission of computer program listings.

INFORMATION DISCLOSURE STATEMENT

1.97 Filing of information disclosure statement. 1.98 Content of information disclosure
statement. 1.99 [Reserved]

EXAMINATION OF APPLICATIONS

1.101 1.102 1.103

[Reserved] Advancement of examination. Suspension of action by the Office.

1.104 1.105 1.105 1.106 1.107 1.108 1.109
1.110

Nature of examination. Requirements for information. (pre-AIA) Requirements for information. [Reserved] [Reserved] [Reserved] Effective filing date of a claimed invention under the Leahy-Smith America Invents Act. Inventorship and ownership of the subject matter of individual claims.

ACTION BY APPLICANT AND FURTHER CONSIDERATION

1.111
1.112 1.113 1.114

Reply by applicant or patent owner to a non-final Office action. Reconsideration before final action. Final rejection or action. Request for continued examination.

AMENDMENTS

1.115 1.116
1.117 1.118 1.119 1.121
1.122 1.123 1.124 1.125 1.126 1.127

Preliminary amendments. Amendments and affidavits or other evidence after final action and prior to appeal. [Reserved] [Reserved] [Reserved] Manner of making amendments in applications. [Reserved] [Reserved] [Reserved] Substitute specification. Numbering of claims. [Reserved]

TRANSITIONAL PROVISIONS

1.129

Transitional procedures for limited examination after final rejection and restriction practice.

AFFIDAVITS OVERCOMING REJECTIONS

1.130 1.131

Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act. Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.

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1.132 Affidavits or declarations traversing rejections or objections.

INTERVIEWS

1.133 Interviews.

TIME FOR REPLY BY APPLICANT; ABANDONMENT OF APPLICATION

1.134 1.135
1.136 1.137
1.138 1.139

Time period for reply to an Office action. Abandonment for failure to reply within time period. Extensions of time. Revival of abandoned application, or terminated or limited reexamination prosecution. Express abandonment. [Reserved]

JOINDER OF INVENTIONS IN ONE APPLICATION; RESTRICTION

1.141
1.142 1.143 1.144 1.145
1.146

Different inventions in one national application. Requirement for restriction. Reconsideration of requirement. Petition from requirement for restriction. Subsequent presentation of claims for different invention. Election of species.

DESIGN PATENTS

1.151 1.152 1.153
1.153
1.154
1.155

Rules applicable. Design drawings. Title, description and claim, oath or declaration. (pre-AIA) Title, description and claim, oath or declaration. Arrangement of application elements in a design application. Expedited examination of design applications.

PLANT PATENTS

1.161 1.162 1.162 1.163
1.164 1.165

Rules applicable. Applicant, oath or declaration. (pre-AIA) Applicant, oath or declaration. Specification and arrangement of application elements in a plant application. Claim. Plant Drawings.

1.166 Specimens. 1.167 Examination.

REISSUES

1.171 1.172 1.172 1.173
1.174 1.175
1.175 1.176 1.177 1.178
1.179

Application for reissue. Reissue applicant. (pre-AIA) Applicants, assignees. Reissue specification, drawings, and amendments. [Reserved] Inventor’s oath or declaration for a reissue application. (pre-AIA) Reissue oath or declaration. Examination of reissue. Issuance of multiple reissue patents. Original patent; continuing duty of applicant. [Reserved]

PETITIONS AND ACTION BY THE DIRECTOR

1.181 1.182 1.183 1.184

Petition to the Director. Questions not specifically provided for. Suspension of rules. [Reserved]

APPEAL TO THE PATENT TRIAL AND APPEAL BOARD

1.191 1.192 1.193 1.194 1.195 1.196 1.197 1.198

Appeal to Patent Trial and Appeal Board. [Reserved] [Reserved] [Reserved] [Reserved] [Reserved] Termination of proceedings. Reopening after a final decision of the Patent Trial and Appeal Board.

PUBLICATION OF APPLICATIONS

1.211 1.211 1.213 1.215 1.215 1.217
1.219 1.221

Publication of applications. (pre-AIA) Publication of applications. Nonpublication request. Patent application publication. (pre-AIA) Patent application publication. Publication of a redacted copy of an application. Early publication. Voluntary publication or republication of patent application publication.

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MANUAL OF PATENT EXAMINING PROCEDURE

MISCELLANEOUS PROVISIONS

1.248 1.251

Service of papers; manner of service; proof of service in cases other than interferences and trials. Unlocatable file.

PREISSUANCE SUBMISSIONS AND PROTESTS BY THIRD PARTIES

1.290 1.291 1.292 1.293 1.293 1.294 1.294
1.295 1.295
1.296 1.296
1.297 1.297

Submissions by third parties in applications. Protests by the public against pending applications. [Reserved] [Reserved] (pre-2013-03-16) Statutory invention registration. [Reserved] (pre-2013-03-16) Examination of request for publication of a statutory invention registration and patent application to which the request is directed. [Reserved] (pre-2013-03-16) Review of decision finally refusing to publish a statutory invention registration. [Reserved] (pre-2013-03-16) Withdrawal of request for publication of statutory invention registration. [Reserved] (pre-2013-03-16) Publication of statutory invention registration.

REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT

1.301 1.302 1.303 1.304

[Reserved] [Reserved] [Reserved] [Reserved]

ALLOWANCE AND ISSUE OF PATENT

1.311 1.312 1.313 1.314 1.315 1.316
1.317

Notice of Allowance. Amendments after allowance. Withdrawal from issue. Issuance of patent. Delivery of patent. Application abandoned for failure to pay issue fee. [Reserved]

1.318 [Reserved]

DISCLAIMER

1.321 1.321

Statutory disclaimers, including terminal disclaimers. (pre-AIA) Statutory disclaimers, including terminal disclaimers.

CORRECTION OF ERRORS IN PATENT

1.322 1.323
1.324
1.325

Certificate of correction of Office mistake. Certificate of correction of applicant’s mistake. Correction of inventorship in patent, pursuant to 35 U.S.C. 256. Other mistakes not corrected.

ARBITRATION AWARDS

1.331 1.332 1.333 1.334 1.335

[Reserved] [Reserved] [Reserved] [Reserved] Filing of notice of arbitration awards.

1.351 1.352
1.362 1.363 1.366 1.377
1.378
Sec. 1.401 1.412 1.413

[Reserved] [Reserved]
MAINTENANCE FEES
Time for payment of maintenance fees. Fee address for maintenance fee purposes. Submission of maintenance fees. Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent. Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
International Processing Provisions
GENERAL INFORMATION
Definitions of terms under the Patent Cooperation Treaty. The United States Receiving Office. The United States International Searching Authority.

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CONSOLIDATED PATENT RULES - JANUARY 2022 UPDATE

1.414
1.415 1.416 1.417 1.419

The United States Patent and Trademark Office as a Designated Office or Elected Office. The International Bureau. The United States International Preliminary Examining Authority. Submission of translation of international publication. Display of currently valid control number under the Paperwork Reduction Act.

WHO MAY FILE AN INTERNATIONAL APPLICATION

1.421 1.421
1.422
1.422 1.423 1.423
1.424
1.425

Applicant for international application. (pre-AIA) Applicant for international application. Legal representative as applicant in an international application. (pre-AIA) When the inventor is dead. [Reserved] (pre-AIA) When the inventor is insane or legally incapacitated. Assignee, obligated assignee, or person having sufficient proprietary interest as applicant in an international application. [Reserved]

THE INTERNATIONAL APPLICATION

1.431 1.431
1.432
1.433
1.434 1.435 1.436 1.437 1.438

International application requirements. (pre-AIA) International application requirements. Designation of States by filing an international application. Physical requirements of international application. The request. The description. The claims. The drawings. The abstract.

FEES

1.445 1.446

International application filing, processing and search fees. Refund of international application filing and processing fees.

PRIORITY

1.451
1.452 1.453

The priority claim and priority document in an international application. Restoration of right of priority. Transmittal of documents relating to earlier search or classification.

REPRESENTATION

1.455 Representation in international applications.

TRANSMITTAL OF RECORD COPY

1.461 Procedures for transmittal of record copy to the International Bureau.

TIMING

1.465 1.468

Timing of application processing based on the priority date. Delays in meeting time limits.

AMENDMENTS

1.471 1.472

Corrections and amendments during international processing. Changes in person, name, or address of applicants and inventors.

UNITY OF INVENTION

1.475
1.476 1.477

Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage. Determination of unity of invention before the International Searching Authority. Protest to lack of unity of invention before the International Searching Authority.

INTERNATIONAL PRELIMINARY EXAMINATION

1.480 1.481 1.482 1.484 1.485

Demand for international preliminary examination. Payment of international preliminary examination fees. International preliminary examination and processing fees. Conduct of international preliminary examination. Amendments by applicant during international preliminary examination.

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1.488 1.489

Determination of unity of invention before the International Preliminary Examining Authority. Protest to lack of unity of invention before the International Preliminary Examining Authority.

NATIONAL STAGE

1.491 1.491 1.492 1.494 1.495 1.495 1.496 1.497 1.497 1.499

National stage commencement, entry, and fulfillment. (pre-AIA) National stage commencement and entry. National stage fees. [Reserved] Entering the national stage in the United States of America. (pre-AIA) Entering the national stage in the United States of America. Examination of international applications in the national stage. Inventor’s oath or declaration under 35 U.S.C. 371(c)(4). (pre-AIA) Oath or declaration under 35 U.S.C. 371(c)(4). Unity of invention during the national stage.

Ex Parte Reexamination of Patents

CITATION OF PRIOR ART AND WRITTEN STATEMENTS

Sec. 1.501
1.502

Citation of prior art and written statements in patent files. Processing of prior art citations during an ex parte reexamination proceeding.

REQUEST FOR EX PARTE REEXAMINATION

1.510 1.515
1.520

Request for ex parte reexamination. Determination of the request for ex parte reexamination. Ex parte reexamination at the initiative of the Director.

EX PARTE REEXAMINATION

1.525 1.530

Order for ex parte reexamination. Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes

1.535 1.540 1.550 1.552 1.555
1.560 1.565

reexamination; inventorship change in ex parte or inter partes reexamination. Reply by third party requester in ex parte reexamination. Consideration of responses in ex parte reexamination. Conduct of ex parte reexamination proceedings. Scope of reexamination in ex parte reexamination proceedings. Information material to patentability in ex parte reexamination and inter partes reexamination proceedings. Interviews in ex parte reexamination proceedings. Concurrent office proceedings which include an ex parte reexamination proceeding.

CERTIFICATE

1.570

Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding.

Supplemental Examination of Patents

1.601 1.605 1.610 1.615 1.620 1.625

Filing of papers in supplemental examination. Items of information. Content of request for supplemental examination. Format of papers filed in a supplemental examination proceeding. Conduct of supplemental examination proceeding. Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.

Adjustment and Extension of Patent Term

ADJUSTMENT OF PATENT TERM DUE TO EXAMINATION DELAY

Sec. 1.701

Extension of patent term due to examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000).

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1.702
1.702
1.703 1.703
1.703 1.704 1.704 1.704 1.704 1.704 1.704 1.705 1.705

Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000). (pre-2013-04-01) Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000). Period of adjustment of patent term due to examination delay. (2012-09-17 thru 2013-03-31) Period of adjustment of patent term due to examination delay. (pre-2012-09-17) Period of adjustment of patent term due to examination delay. Reduction of period of adjustment of patent term. (2015-03-10 thru 2020-07-15) Reduction of period of adjustment of patent term. (2013-12-18 thru 2015-03-09) Reduction of period of adjustment of patent term. (2012-09-17 thru 2013-12-17) Reduction of period of adjustment of patent term. (pre-2013-03-31) Reduction of period of adjustment of patent term. (pre-2012-09-17) Reduction of period of adjustment of patent term. Patent term adjustment determination. (pre-2013-04-01) Patent term adjustment determination.

EXTENSION OF PATENT TERM DUE TO REGULATORY REVIEW

1.710 1.720 1.730 1.740
1.741 1.750 1.760

Patents subject to extension of the patent term. Conditions for extension of patent term. Applicant for extension of patent term; signature requirements. Formal requirements for application for extension of patent term; correction of informalities. Complete application given a filing date; petition procedure. Determination of eligibility for extension of patent term. Interim extension of patent term under 35 U.S.C. 156(e)(2).

1.765 1.770 1.775
1.776 1.777 1.778 1.779 1.780 1.785
1.790 1.791

Duty of disclosure in patent term extension proceedings. Express withdrawal of application for extension of patent term. Calculation of patent term extension for a human drug, antibiotic drug, or human biological product. Calculation of patent term extension for a food additive or color additive. Calculation of patent term extension for a medical device. Calculation of patent term extension for an animal drug product. Calculation of patent term extension for a veterinary biological product. Certificate or order of extension of patent term. Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product. Interim extension of patent term under 35 U.S.C. 156(d)(5). Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.

Biotechnology Invention Disclosures

DEPOSIT OF BIOLOGICAL MATERIAL

Sec. 1.801 1.802 1.803 1.804 1.805 1.806 1.807 1.808 1.809

Biological material. Need or opportunity to make a deposit. Acceptable depository. Time of making an original deposit. Replacement or supplement of deposit. Term of deposit. Viability of deposit. Furnishing of samples. Examination procedures.

APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCES

1.821 1.822
1.823

Nucleotide and/or amino acid sequence disclosures in patent applications. Symbols and format to be used for nucleotide and/or amino acid sequence data. Requirements for content of a “Sequence Listing” part of the specification.

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1.824 1.825

Form and format for a nucleotide and/or amino acid sequence submissions as an ASCII plain text file Amendments to add or replace a "Sequence Listing" and CRF copy thereof.

Inter Partes Reexamination of Patents That Issued From an Original Application Filed in the United States on or
After November 29, 1999

PRIOR ART CITATIONS

Sec. 1.902

Processing of prior art citations during an inter partes reexamination proceeding.

REQUIREMENTS FOR INTER PARTES REEXAMINATION PROCEEDINGS

1.903 1.904 1.905 1.906 1.907 1.913 1.915 1.919 1.923 1.925 1.927

Service of papers on parties in inter partes reexamination. Notice of inter partes reexamination in Official Gazette. Submission of papers by the public in inter partes reexamination. Scope of reexamination in inter partes reexamination proceeding. Inter partes reexamination prohibited. Persons eligible to file, and time for filing, a request for inter partes reexamination. Content of request for inter partes reexamination. Filing date of request for inter partes reexamination. Examiner’s determination on the request for inter partes reexamination. Partial refund if request for inter partes reexamination is not ordered. Petition to review refusal to order inter partes reexamination.

INTER PARTES REEXAMINATION OF PATENTS

1.931 Order for inter partes reexamination.

INFORMATION DISCLOSURE IN INTER PARTES REEXAMINATION

1.933 Patent owner duty of disclosure in inter partes reexamination proceedings.

OFFICE ACTIONS AND RESPONSES (BEFORE THE EXAMINER) IN INTER PARTES REEXAMINATION

1.935 1.937 1.939 1.941 1.943
1.945 1.947
1.948
1.949 1.951 1.953

Initial Office action usually accompanies order for inter partes reexamination. Conduct of inter partes reexamination. Unauthorized papers in inter partes reexamination Amendments by patent owner in inter partes reexamination. Requirements of responses, written comments, and briefs in inter partes reexamination. Response to Office action by patent owner in inter partes reexamination. Comments by third party requester to patent owner’s response in inter partes reexamination. Limitations on submission of prior art by third party requester following the order for inter partes reexamination. Examiner’s Office action closing prosecution in inter partes reexamination. Options after Office action closing prosecution in inter partes reexamination. Examiner’s Right of Appeal Notice in inter partes reexamination.

INTERVIEWS PROHIBITED IN INTER PARTES REEXAMINATION

1.955 Interviews prohibited in inter partes reexamination proceedings.

EXTENSIONS OF TIME, TERMINATING OF REEXAMINATION PROSECUTION, AND PETITIONS TO REVIVE IN INTER PARTES REEXAMINATION

1.956 1.957
1.958

Patent owner extensions of time in inter partes reexamination. Failure to file a timely, appropriate or complete response or comment in inter partes reexamination. Petition to revive inter partes reexamination prosecution terminated for lack of patent owner response.

APPEAL TO THE PATENT TRIAL AND APPEAL BOARD IN INTER PARTES REEXAMINATION

1.959 1.961 1.979

Appeal in inter partes reexamination. - 1.977 [Reserved] Return of Jurisdiction from the Patent Trial and Appeal Board; termination of appeal proceedings.

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