Appendix R Consolidated Patent Rules - United States Patent and

478 Pages·2016·8.35 MB·English

Appendix R Consolidated Patent Rules - December 2022 Update
Title 37 - Code of Federal Regulations
Patents, Trademarks, and Copyrights
[Editor Note: Current as of December 19, 2022. 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 ef fective 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 (parts delayed, see 14 below);
(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2021, corrected to effective January 21, 2021, 86 FR 2542, January 13, 2021 and correction withdrawn 86 FR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effective January 21, 2021, 86 FR 2542, January 13, 2021 and correction withdrawn 86 FR 3815, January 15,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; Corr ection, 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;
(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;
(16) Standard for Presentation of Nucleotide and Amino Acid Sequence Listings Using eXtensible Markup
Language (XML) in Patent Applications To Implement WIPO Standard ST.26; Incorporation by Reference, 87
FR 30806, May 20, 2022, effective July 1, 2022;
(17) Eliminating Continuing Legal Education Certicfi ation and Reco gnition for Patent Practitioners, 87FR68054,
November 14, 2022, effective November 14, 2022; and
(18) Date of Receipt of Electronic Submissions of Patent Correspondence, 87 FR 68900, November 17, 2022,
effective December 19, 2022.]
R-1 December 2022
MANUAL OF PATENT EXAMINING PROCEDURE
CHAPTER I—UNITED STATES PATENT CHAPTER I — UNITED STATES
AND TRADEMARK OFFICE, PATENT AND TRADEMARK OFFICE,
DEPARTMENT OF COMMERCE DEPARTMENT OF COMMERCE
SUBCHAPTER A – GENERAL SUBCHAPTER A — GENERAL
PATENTS
PATENTS
PART 1 RULES OF PRACTICE IN PATENT CASES PART 1 — RULES OF PRACTICE IN PATENT
PART 2 RULES OF PRACTICE IN TRADEMARK CASES CASES
[See the Trademark Federal Statutes and Rules (TFSR)]
PART 3 ASSIGNMENT, RECORDING AND RIGHTS OF
General Provisions
ASSIGNEE
PART 4 COMPLAINTS REGARDING INVENTION
GENERAL INFORMATION AND
PROMOTERS
CORRESPONDENCE
PART 5 SECRECY OF CERTAIN INVENTIONS AND
LICENSES TO EXPORT AND FILE APPLICATIONS IN
Sec.
FOREIGN COUNTRIES
1.1 Addresses for non-trademark
INDEX I RULES RELATING TO PATENTS
correspondence with the United States
Patent and Trademark Office.
1.2 Business to be transacted in writing.
PRACTICE BEFORE THE PATENT AND
1.3 Business to be conducted with decorum
TRADEMARK OFFICE
and courtesy.
PART 10 [Reserved] 1.4 Nature of correspondence and signature
PART 11 REPRESENTATION OF OTHERS BEFORE THE requirements.
UNITED STATES PATENT AND TRADEMARK OFFICE
1.5 Identicfi ation of patent, patent application,
INDEX II RULES RELATING TO REPRESENTATION OF or patent-related proceeding.
OTHERS BEFORE THE UNITED STATES PATENT AND
1.6 Receipt of correspondence.
TRADEMARK OFFICE
1.7 Times for taking action; Expiration on
PART 41 PRACTICE BEFORE THE PATENT TRIAL AND
Saturday, Sunday or Federal holiday.
APPEAL BOARD
1.8 Certificate of mailing or transmission.
PART 42 TRIAL PRACTICE BEFORE THE PATENT TRIAL
AND APPEAL BOARD 1.9 Definitions.
PART 90 JUDICIAL REVIEW OF PATENT TRIAL AND 1.10 Filing of correspondence by Priority Mail
APPEAL BOARD DECISIONS Express®.
RECORDS AND FILES OF THE PATENT AND
SUBCHAPTER B – ADMINISTRATION
TRADEMARK OFFICE
PART 102 DISCLOSURE OF GOVERNMENT
1.11 Files open to the public.
INFORMATION
1.12 Assignment records open to public
PART 104 LEGAL PROCESSES
inspection.
SUBCHAPTER C – PROTECTION OF 1.12 (pre-AIA) Assignment records open to
FOREIGN MASK WORKS public inspection.
1.13 Copies and certified copies.
PART 150 REQUESTS FOR PRESIDENTIAL 1.14 Patent applications preserved in
PROCLAMATIONS PURSUANT TO 17 U.S.C. 902(a)(2)
confidence.
1.14 (pre-AIA) Patent applications preserved in
confidence.
1.15 [Reserved]
FEES AND PAYMENT OF MONEY
December 2022 R-2
CONSOLIDATED PATENT RULES - DECEMBER 2022 UPDATE
1.16 National application filing, search, and 1.36 (pre-AIA) Revocation of power of
examination fees. attorney; withdrawal of patent attorney or
1.17 Patent application and reexamination agent.
processing fees.
WHO MAY APPLY FOR A PATENT
1.18 Patent post allowance (including issue)
fees.
1.41 Inventorship.
1.19 Document supply fees.
1.41 (pre-AIA) Applicant for patent.
1.20 Post-issuance fees.
1.42 Applicant for patent.
1.21 Miscellaneous fees and charges.
1.42 (pre-AIA) When the inventor is dead.
1.22 Fees payable in advance.
1.43 Application for patent by a legal
1.23 Methods of payment.
representative of a deceased or legally
1.24 [Reserved]
incapacitated inventor.
1.25 Deposit accounts.
1.43 (pre-AIA) When the inventor is insane or
1.26 Refunds.
legally incapacitated.
1.27 Denfi ition of small entities and establishing
1.44 [Reserved]
status as a small entity to permit payment
1.45 Application for patent by joint inventors.
of small entity fees; when a determination
1.45 (pre-AIA) Joint inventors.
of entitlement to small entity status and
1.46 Application for patent by an assignee,
notification of loss of entitlement to small
obligated assignee, or a person who
entity status are required; fraud on the
otherwise shows sufficient proprietary
Office.
interest in the matter.
1.27 (pre-AIA) Definition of small entities and
1.46 (pre-AIA) Assigned inventions and patents.
establishing status as a small entity to
1.47 [Reserved]
permit payment of small entity fees; when
1.47 (pre-AIA) Filing when an inventor refuses
a determination of entitlement to small
to sign or cannot be reached.
entity status and notification of loss of
1.48 Correction of inventorship pursuant to 35
entitlement to small entity status are
U.S.C. 116 or correction of the name or
required; fraud on the Office.
order of names in a patent application,
1.28 Refunds when small entity status is later
other than a reissue application.
established; how errors in small entity
status are excused. THE APPLICATION
1.29 Micro entity status.
1.51 General requisites of an application.
National Processing Provisions 1.52 Language, paper, writing, margins,
read-only optical disc specifications.
PROSECUTION OF APPLICATION AND
1.53 Application number, filing date, and
APPOINTMENT OF ATTORNEY OR AGENT
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, lfiing 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.
R-3 December 2022
MANUAL OF PATENT EXAMINING PROCEDURE
1.58 Chemical and mathematical formulas and 1.85 Corrections to drawings.
tables. 1.88 [Reserved]
1.59 Expungement of information or copy of
MODELS, EXHIBITS, SPECIMENS
papers in application file.
1.60 [Reserved]
1.91 Models or exhibits not generally admitted
1.61 [Reserved]
as part of application or patent.
1.62 [Reserved]
1.92 [Reserved]
1.93 Specimens.
OATH OR DECLARATION
1.94 Return of models, exhibits or specimens.
1.63 Inventor’s oath or declaration. 1.95 Copies of exhibits.
1.63 (pre-AIA) Oath or declaration. 1.96 Submission of computer program listings.
1.64 Substitute statement in lieu of an oath or
INFORMATION DISCLOSURE STATEMENT
declaration.
1.64 (pre-AIA) Person making oath or
1.97 Filing of information disclosure statement.
declaration.
1.98 Content of information disclosure
1.66 Statements under oath.
statement.
1.66 (pre-AIA) Officers authorized to
1.99 [Reserved]
administer oaths.
1.67 Supplemental oath or declaration. EXAMINATION OF APPLICATIONS
1.67 (pre-AIA) Supplemental oath or
declaration. 1.101 [Reserved]
1.68 Declaration in lieu of oath. 1.102 Advancement of examination.
1.69 Foreign language oaths and declarations. 1.103 Suspension of action by the Office.
1.70 [Reserved] 1.104 Nature of examination.
1.105 Requirements for information.
SPECIFICATION 1.105 (pre-AIA) Requirements for information.
1.106 [Reserved]
1.71 Detailed description and specification of
1.107 [Reserved]
the invention.
1.108 [Reserved]
1.72 Title and abstract.
1.109 Effective lfi ing date of a claimed in vention
1.73 Summary of the invention.
under the Leahy-Smith America Invents
1.74 Reference to drawings.
Act.
1.75 Claim(s).
1.110 Inventorship and ownership of the subject
1.76 Application data sheet.
matter of individual claims.
1.76 (2012-09-16 thru 2013-12-17) Application
data sheet. ACTION BY APPLICANT AND FURTHER
1.76 (pre-AIA) Application data sheet. CONSIDERATION
1.77 Arrangement of application elements.
1.111 Reply by applicant or patent owner to a
1.78 Claiming benefit of earlier filing date and
non-final Office action.
cross-references to other applications.
1.112 Reconsideration before final action.
1.79 [Reserved]
1.113 Final rejection or action.
THE DRAWINGS 1.114 Request for continued examination.
1.81 Drawings required in patent application. AMENDMENTS
1.81 (2012-09-16 thru 2013-12-17) Drawings
1.115 Preliminary amendments.
required in patent application.
1.116 Amendments and affida vits or other
1.81 (pre-AIA) Drawings required in patent
evidence after final action and prior to
application.
appeal.
1.83 Content of drawing.
1.117 [Reserved]
1.84 Standards for drawings.
1.118 [Reserved]
December 2022 R-4
CONSOLIDATED PATENT RULES - DECEMBER 2022 UPDATE
1.119 [Reserved] 1.146 Election of species.
1.121 Manner of making amendments in
DESIGN PATENTS
applications.
1.122 [Reserved]
1.151 Rules applicable.
1.123 [Reserved]
1.152 Design drawings.
1.124 [Reserved]
1.153 Title, description and claim, oath or
1.125 Substitute specification.
declaration.
1.126 Numbering of claims.
1.153 (pre-AIA) Title, description and claim, oath
1.127 [Reserved]
or declaration.
1.154 Arrangement of application elements in a
TRANSITIONAL PROVISIONS
design application.
1.129 Transitional procedures for limited 1.155 Expedited examination of design
examination after final rejection and applications.
restriction practice.
PLANT PATENTS
AFFIDAVITS OVERCOMING REJECTIONS
1.161 Rules applicable.
1.130 Affida vit or declaration of attribution or 1.162 Applicant, oath or declaration.
prior public disclosure under the 1.162 (pre-AIA) Applicant, oath or declaration.
Leahy-Smith America Invents Act. 1.163 Specification and arrangement of
1.131 Affida vit or declaration of prior invention application elements in a plant application.
or to disqualify commonly owned patent 1.164 Claim.
or published application as prior art. 1.165 Plant Drawings.
1.132 Affida vits or declarations traversing 1.166 Specimens.
rejections or objections. 1.167 Examination.
INTERVIEWS REISSUES
1.133 Interviews. 1.171 Application for reissue.
1.172 Reissue applicant.
TIME FOR REPLY BY APPLICANT;
1.172 (pre-AIA) Applicants, assignees.
ABANDONMENT OF APPLICATION
1.173 Reissue specification, dra wings, and
amendments.
1.134 Time period for reply to an Office action.
1.174 [Reserved]
1.135 Abandonment for failure to reply within
1.175 Inventor’s oath or declaration for a reissue
time period.
application.
1.136 Extensions of time.
1.175 (pre-AIA) Reissue oath or declaration.
1.137 Revival of abandoned application, or
1.176 Examination of reissue.
terminated or limited reexamination
1.177 Issuance of multiple reissue patents.
prosecution.
1.178 Original patent; continuing duty of
1.138 Express abandonment.
applicant.
1.139 [Reserved]
1.179 [Reserved]
JOINDER OF INVENTIONS IN ONE APPLICATION;
PETITIONS AND ACTION BY THE DIRECTOR
RESTRICTION
1.181 Petition to the Director.
1.141 Different inventions in one national
1.182 Questions not specifically pro vided for.
application.
1.183 Suspension of rules.
1.142 Requirement for restriction.
1.184 [Reserved]
1.143 Reconsideration of requirement.
1.144 Petition from requirement for restriction.
APPEAL TO THE PATENT TRIAL AND APPEAL
1.145 Subsequent presentation of claims for
BOARD
different invention.
R-5 December 2022
MANUAL OF PATENT EXAMINING PROCEDURE
1.191 Appeal to Patent Trial and Appeal Board. 1.296 (pre-2013-03-16) Withdrawal of request
1.192 [Reserved] for publication of statutory invention
1.193 [Reserved] registration.
1.194 [Reserved] 1.297 [Reserved]
1.195 [Reserved] 1.297 (pre-2013-03-16) Publication of statutory
1.196 [Reserved] invention registration.
1.197 Termination of proceedings.
REVIEW OF PATENT AND TRADEMARK OFFICE
1.198 Reopening after a final decision of the
DECISIONS BY COURT
Patent Trial and Appeal Board.
1.301 [Reserved]
PUBLICATION OF APPLICATIONS
1.302 [Reserved]
1.211 Publication of applications. 1.303 [Reserved]
1.213 Nonpublication request. 1.304 [Reserved]
1.215 Patent application publication.
ALLOWANCE AND ISSUE OF PATENT
1.215 (pre-AIA) Patent application publication.
1.217 Publication of a redacted copy of an
1.311 Notice of Allowance.
application.
1.312 Amendments after allowance.
1.219 Early publication.
1.313 Withdrawal from issue.
1.221 Voluntary publication or republication of
1.314 Issuance of patent.
patent application publication.
1.315 Delivery of patent.
1.316 Application abandoned for failure to pay
MISCELLANEOUS PROVISIONS
issue fee.
1.248 Service of papers; manner of service; proof 1.317 [Reserved]
of service in cases other than interferences 1.318 [Reserved]
and trials.
DISCLAIMER
1.251 Unlocatable file.
1.321 Statutory disclaimers, including terminal
PREISSUANCE SUBMISSIONS AND PROTESTS BY
disclaimers.
THIRD PARTIES
1.321 (pre-AIA) Statutory disclaimers, including
1.290 Submissions by third parties in terminal disclaimers.
applications.
CORRECTION OF ERRORS IN PATENT
1.291 Protests by the public against pending
applications.
1.322 Certicfi ate of correction of Ofcfi e mistak e.
1.292 [Reserved]
1.323 Certificate of correction of applicant’ s
1.293 [Reserved]
mistake.
1.293 (pre-2013-03-16) Statutory invention
1.324 Correction of inventorship in patent,
registration.
pursuant to 35 U.S.C. 256.
1.294 [Reserved]
1.325 Other mistakes not corrected.
1.294 (pre-2013-03-16) Examination of request
for publication of a statutory invention ARBITRATION AWARDS
registration and patent application to which
the request is directed. 1.331 [Reserved]
1.295 [Reserved] 1.332 [Reserved]
1.295 (pre-2013-03-16) Review of decision 1.333 [Reserved]
finally refusing to publish a statutory 1.334 [Reserved]
invention registration. 1.335 Filing of notice of arbitration awards.
1.296 [Reserved]
1.351 [Reserved]
1.352 [Reserved]
December 2022 R-6
CONSOLIDATED PATENT RULES - DECEMBER 2022 UPDATE
MAINTENANCE FEES 1.431 (pre-AIA) International application
requirements.
1.362 Time for payment of maintenance fees.
1.432 Designation of States by filing an
1.363 Fee address for maintenance fee purposes.
international application.
1.366 Submission of maintenance fees.
1.433 Physical requirements of international
1.377 Review of decision refusing to accept and
application.
record payment of a maintenance fee filed
1.434 The request.
prior to expiration of patent.
1.435 The description.
1.378 Acceptance of delayed payment of
1.436 The claims.
maintenance fee in expired patent to
1.437 The drawings.
reinstate patent.
1.438 The abstract.
International Processing Provisions
FEES
GENERAL INFORMATION
1.445 International application lfiing, processing
and search fees.
Sec.
1.446 Refund of international application filing
1.401 Definitions of terms under the P atent
and processing fees.
Cooperation Treaty.
1.412 The United States Receiving Office.
PRIORITY
1.413 The United States International Searching
Authority. 1.451 The priority claim and priority document
1.414 The United States Patent and Trademark in an international application.
Office as a Designated Office or Elected 1.452 Restoration of right of priority.
Office. 1.453 Transmittal of documents relating to earlier
1.415 The International Bureau. search or classification.
1.416 The United States International Preliminary
Examining Authority. REPRESENTATION
1.417 Submission of translation of international
1.455 Representation in international
publication.
applications.
1.419 Display of currently valid control number
under the Paperwork Reduction Act.
TRANSMITTAL OF RECORD COPY
WHO MAY FILE AN INTERNATIONAL 1.461 Procedures for transmittal of record copy
APPLICATION
to the International Bureau.
1.421 Applicant for international application.
TIMING
1.421 (pre-AIA) Applicant for international
application. 1.465 Timing of application processing based on
1.422 Legal representative as applicant in an the priority date.
international application. 1.468 Delays in meeting time limits.
1.422 (pre-AIA) When the inventor is dead.
1.423 [Reserved] AMENDMENTS
1.423 (pre-AIA) When the inventor is insane or
1.471 Corrections and amendments during
legally incapacitated.
international processing.
1.424 Assignee, obligated assignee, or person
1.472 Changes in person, name, or address of
having sufficient proprietary interest as
applicants and inventors.
applicant in an international application.
1.425 [Reserved] UNITY OF INVENTION
THE INTERNATIONAL APPLICATION 1.475 Unity of invention before the International
Searching Authority, the International
1.431 International application requirements.
R-7 December 2022
MANUAL OF PATENT EXAMINING PROCEDURE
Preliminary Examining Authority and 1.501 Citation of prior art and written statements
during the national stage. in patent files.
1.476 Determination of unity of invention before 1.502 Processing of prior art citations during an
the International Searching Authority. ex parte reexamination proceeding.
1.477 Protest to lack of unity of invention before
REQUEST FOR EX PARTE REEXAMINATION
the International Searching Authority.
1.510 Request for ex parte reexamination.
INTERNATIONAL PRELIMINARY EXAMINATION
1.515 Determination of the request for ex parte
1.480 Demand for international preliminary reexamination.
examination. 1.520 Ex parte reexamination at the initiative of
1.481 Payment of international preliminary the Director.
examination fees.
EX PARTE REEXAMINATION
1.482 International preliminary examination and
processing fees.
1.525 Order for ex parte reexamination.
1.484 Conduct of international preliminary
1.530 Statement by patent owner in ex parte
examination.
reexamination; amendment by patent
1.485 Amendments by applicant during
owner in ex parte or inter partes
international preliminary examination.
reexamination; inventorship change in ex
1.488 Determination of unity of invention before
parte or inter partes reexamination.
the International Preliminary Examining
1.535 Reply by third party requester in ex parte
Authority.
reexamination.
1.489 Protest to lack of unity of invention before
1.540 Consideration of responses in ex parte
the International Preliminary Examining
reexamination.
Authority.
1.550 Conduct of ex parte reexamination
proceedings.
NATIONAL STAGE
1.552 Scope of reexamination in ex parte
1.491 National stage commencement, entry, and reexamination proceedings.
fulfillment. 1.555 Information material to patentability in ex
1.491 (pre-AIA) National stage commencement parte reexamination and inter partes
and entry. reexamination proceedings.
1.492 National stage fees. 1.560 Interviews in ex parte reexamination
1.494 [Reserved] proceedings.
1.495 Entering the national stage in the United 1.565 Concurrent office proceedings which
States of America. include an ex parte reexamination
1.495 (pre-AIA) Entering the national stage in proceeding.
the United States of America.
CERTIFICATE
1.496 Examination of international applications
in the national stage.
1.570 Issuance and publication of ex parte
1.497 Inventor’s oath or declaration under 35
reexamination certificate concludes e x
U.S.C. 371(c)(4).
parte reexamination proceeding.
1.497 (pre-AIA) Oath or declaration under 35
U.S.C. 371(c)(4). Supplemental Examination of Patents
1.499 Unity of invention during the national
stage. 1.601 Filing of papers in supplemental
examination.
Ex Parte Reexamination of Patents 1.605 Items of information.
1.610 Content of request for supplemental
CITATION OF PRIOR ART AND WRITTEN
examination.
STATEMENTS
1.615 Format of papers filed in a supplemental
Sec. examination proceeding.
December 2022 R-8
CONSOLIDATED PATENT RULES - DECEMBER 2022 UPDATE
1.620 Conduct of supplemental examination EXTENSION OF PATENT TERM DUE TO
proceeding. REGULATORY REVIEW
1.625 Conclusion of supplemental examination;
1.710 Patents subject to extension of the patent
publication of supplemental examination
term.
certificate; procedure after conclusion.
1.720 Conditions for extension of patent term.
Adjustment and Extension of Patent Term 1.730 Applicant for extension of patent term;
signature requirements.
ADJUSTMENT OF PATENT TERM DUE TO 1.740 Formal requirements for application for
EXAMINATION DELAY
extension of patent term; correction of
informalities.
Sec.
1.741 Complete application given a filing date;
1.701 Extension of patent term due to
petition procedure.
examination delay under the Uruguay
1.750 Determination of eligibility for extension
Round Agreements Act (original
of patent term.
applications, other than designs, filed on
1.760 Interim extension of patent term under 35
or after June 8, 1995, and before May 29,
U.S.C. 156(e)(2).
2000).
1.765 Duty of disclosure in patent term extension
1.702 Grounds for adjustment of patent term due
proceedings.
to examination delay under the Patent
1.770 Express withdrawal of application for
Term Guarantee Act of 1999 (original
extension of patent term.
applications, other than designs, filed on
1.775 Calculation of patent term extension for a
or after May 29, 2000).
human drug, antibiotic drug, or human
1.702 (pre-2013-04-01) Grounds for adjustment
biological product.
of patent term due to examination delay
1.776 Calculation of patent term extension for a
under the Patent Term Guarantee Act of
food additive or color additive.
1999 (original applications, other than
1.777 Calculation of patent term extension for a
designs, filed on or after May 29, 2000).
medical device.
1.703 Period of adjustment of patent term due to
1.778 Calculation of patent term extension for
examination delay.
an animal drug product.
1.703 (2012-09-17 thru 2013-03-31) Period of
1.779 Calculation of patent term extension for a
adjustment of patent term due to
veterinary biological product.
examination delay.
1.780 Certificate or order of e xtension of patent
1.703 (pre-2012-09-17) Period of adjustment of
term.
patent term due to examination delay.
1.785 Multiple applications for extension of term
1.704 Reduction of period of adjustment of patent
of the same patent or of different patents
term.
for the same regulatory review period for
1.704 (2015-03-10 thru 2020-07-15) Reduction
a product.
of period of adjustment of patent term.
1.790 Interim extension of patent term under 35
1.704 (2013-12-18 thru 2015-03-09) Reduction
U.S.C. 156(d)(5).
of period of adjustment of patent term.
1.791 Termination of interim extension granted
1.704 (2012-09-17 thru 2013-12-17) Reduction
prior to regulatory approval of a product
of period of adjustment of patent term.
for commercial marketing or use.
1.704 (pre-2013-03-31) Reduction of period of
adjustment of patent term.
Biotechnology Invention Disclosures
1.704 (pre-2012-09-17) Reduction of period of
adjustment of patent term. DEPOSIT OF BIOLOGICAL MATERIAL
1.705 Patent term adjustment determination.
Sec.
1.705 (pre-2013-04-01) Patent term adjustment
1.801 Biological material.
determination.
1.802 Need or opportunity to make a deposit.
1.803 Acceptable depository.
R-9 December 2022
MANUAL OF PATENT EXAMINING PROCEDURE
1.804 Time of making an original deposit. REQUIREMENTS FOR INTER PARTES
1.805 Replacement or supplement of deposit. REEXAMINATION PROCEEDINGS
1.806 Term of deposit.
1.903 Service of papers on parties in inter partes
1.807 Viability of deposit.
reexamination.
1.808 Furnishing of samples.
1.904 Notice of inter partes reexamination in
1.809 Examination procedures.
Official Gazette.
APPLICATION DISCLOSURES CONTAINING 1.905 Submission of papers by the public in inter
NUCLEOTIDE AND/OR AMINO ACID SEQUENCES partes reexamination.
1.906 Scope of reexamination in inter partes
1.821 Nucleotide and/or amino acid sequence
reexamination proceeding.
disclosures in patent applications.
1.907 Inter partes reexamination prohibited.
1.822 Symbols and format to be used for
1.913 Persons eligible to file, and time for filing,
nucleotide and/or amino acid sequence
a request for inter partes reexamination.
data.
1.915 Content of request for inter partes
1.823 Requirements for content of a “Sequence
reexamination.
Listing” part of the specification.
1.919 Filing date of request for inter partes
1.824 Form and format for a nucleotide and/or
reexamination.
amino acid sequence submissions as an
1.923 Examiner’s determination on the request
ASCII plain text file
for inter partes reexamination.
1.825 Amendments to add or replace a “Sequence
1.925 Partial refund if request for inter partes
Listing” and CRF copy thereof.
reexamination is not ordered.
1.831 Requirements for patent applications filed
1.927 Petition to review refusal to order inter
on or after July 1, 2022, having nucleotide
partes reexamination.
and/or amino acid sequence disclosures.
1.832 Representation of nucleotide and/or amino INTER PARTES REEXAMINATION OF PATENTS
acid sequence data in the “Sequence
1.931 Order for inter partes reexamination.
Listing XML” part of a patent application
filed on or after July 1, 2022.
INFORMATION DISCLOSURE IN INTER PARTES
1.833 Requirements for a “Sequence Listing
REEXAMINATION
XML” for nucleotide and/or amino acid
sequences as part of a patent application 1.933 Patent owner duty of disclosure in inter
filed on or after July 1, 2022. partes reexamination proceedings.
1.834 Form and format for nucleotide and/ or
OFFICE ACTIONS AND RESPONSES (BEFORE THE
amino acid sequence submissions as the
EXAMINER) IN INTER PARTES REEXAMINATION
‘‘Sequence Listing XML’’ in patent
applications filed on or after July 1, 2022.
1.935 Initial Office action usually accompanies
1.835 Amendment to add or replace a “Sequence
order for inter partes reexamination.
Listing XML” in patent applications filed
1.937 Conduct of inter partes reexamination.
on or after July 1, 2022.
1.939 Unauthorized papers in inter partes
1.839 Incorporation by reference.
reexamination
1.941 Amendments by patent owner in inter
Inter Partes Reexamination of Patents That Issued From
partes reexamination.
an Original Application Filed in the United States on or
1.943 Requirements of responses, written
After November 29, 1999
comments, and briefs in inter partes
PRIOR ART CITATIONS reexamination.
1.945 Response to Ofcfi e action by patent o wner
Sec.
in inter partes reexamination.
1.902 Processing of prior art citations during an
1.947 Comments by third party requester to
inter partes reexamination proceeding.
patent owner’s response in inter partes
reexamination.
December 2022 R-10