Chapter 700 — Examination of Applications
Ninth Edition, Revision 01.2024
Contents
- 701 Statutory Authority for Examination
- 702 Requisites of the Application
- 703 [Reserved]
- 704 Search and Requirements for Information
- 705 Patentability Reports
- 706 Rejection of Claims
- 707 Examiner’s Letter or Action
- 707.01 Primary Examiner Indicates Action for New Assistant
- 707.02 Applications Up for Third Action and 5-Year Applications
- 707.05 Citation of References
- 707.06 Citation of Decisions, Orders Memorandums, and Notices
- 707.07 Completeness and Clarity of Examiner’s Action
- 707.08 Reviewing and Initialing by Assistant Examiner
- 707.09 Signing by Primary or Other Authorized Examiner
- 707.10 Entry
- 707.11 Date
- 707.12 Mailing
- 707.13 Returned Office Action
- 708 Order of Examination
- 709 Suspension of Action
- 710 Period for Reply
- 711 Abandonment of Patent Application
- 711.01 Express or Formal Abandonment
- 711.02 Failure To Take Required Action During Statutory Period
- 711.03 Reconsideration of Holding of Abandonment; Revival
- 711.04 Public Access to Abandoned Applications
- 711.05 Letter of Abandonment Received After Application Is Allowed
- 711.06 Abstracts, Abbreviatures, and Defensive Publications
- 712 [Reserved]
- 713 Interviews
- 713.01 General Policy, How Conducted
- 713.02 Interviews Prior to First Official Action
- 713.03 Interview for “Sounding Out” Examiner Not Permitted
- 713.04 Substance of Interview Must Be Made of Record
- 713.05 Interviews Prohibited or Granted, Special Situations
- 713.06 No Inter Partes Questions Discussed Ex Parte
- 713.07 Exposure of Other Cases
- 713.08 Demonstration, Exhibits, Models
- 713.09 Interviews Between Final Rejection and Notice of Appeal
- 713.10 Interview Preceding Filing Amendment Under 37 CFR 1.312
- 714 Amendments, Applicant’s Action
- 714.01 Signatures to Amendments
- 714.02 Must Be Fully Responsive
- 714.03 Amendments Not Fully Responsive, Action To Be Taken
- 714.04 Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty
- 714.05 Examiner Should Immediately Review
- 714.06 [Reserved]
- 714.07 Amendments Not in Permanent Ink
- 714.10 Claims Added in Excess of Claims Previously Paid For
- 714.11 Amendment Filed During Interference Proceedings
- 714.12 Amendments and Other Replies After Final Rejection or Action
- 714.13 Amendments and Other Replies After Final Rejection or Action, Procedure Followed
- 714.14 Amendments After Allowance of All Claims
- 714.15 Amendment Received in Technology Center After Mailing of Notice of Allowance
- 714.16 Amendment After Notice of Allowance, 37 CFR 1.312
- 714.17 Amendment Filed After the Period for Reply Has Expired
- 714.18 Entry of Amendments
- 714.19 List of Amendments, Entry Denied
- 714.20 List of Amendments Entered in Part
- 714.21 Amendments Inadvertently Entered, No Legal Effect
- 714.25 Discourtesy of Applicant or Attorney
- 715 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a)
- 715.01 37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits
- 715.02 How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims
- 715.03 Genus-Species, Practice Relative to Cases Where Predictability Is in Question
- 715.04 Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations
- 715.05 U.S. Patent or Application Publication Claiming Same Invention
- 715.06 [Reserved]
- 715.07 Facts and Documentary Evidence
- 715.08 Decided by Primary Examiner
- 715.09 Timely Presentation
- 715.10 Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode
- 716 Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections
- 716.01 Generally Applicable Criteria
- 716.02 Allegations of Unexpected Results
- 716.03 Commercial Success
- 716.04 Long-Felt Need and Failure of Others
- 716.05 Skepticism of Experts
- 716.06 Copying
- 716.07 Inoperability of References
- 716.08 Utility and Operability of Applicant’s Disclosure
- 716.09 Sufficiency of Disclosure
- 716.10 Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103
- 717 Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2)
- 718 Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c)
- 719 File Wrapper
- 720 Public Use Proceedings
- 724 Trade Secret, Proprietary, and Protective Order Materials
- 724.01 Completeness of the Patent File Wrapper
- 724.02 Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials
- 724.03 Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02
- 724.04 Office Treatment and Handling of Materials Submitted Under MPEP § 724.02
- 724.05 Petition To Expunge Information or Copy of Papers in Application File
- 724.06 Handling of Petitions To Expunge Information or Copy of Papers in Application File