MPEP Posts

1403: While examiners should not make rejections based on lack of diligence …, courts have looked to see if a reissue applicant was diligent in correcting the error(s) in the patent…, even [for] narrowing reissues.

If the wording is not correct or if all of the required affirmations have not been made, or if it has not been properly subscribed to, a new oath or declaration should be submitted. 2/2

602.03: The wording of an oath or declaration should not be amended, altered or changed in any manner after it has been signed. 1/2

… not totally inconsistent and unrelated to the original description and photograph of the plant may be submitted in reply to an Office action. Such submission will not constitute new matter under 35 U.S.C. 132. Jessel v. Newland, 195 USPQ 678, 684 (Dep. Comm’r Pat. 1977). 2/2

1605: If the written description of a plant is deficient in certain respects (see, e.g., In re Greer, 484 F.2d 488, 179 USPQ 301 (CCPA 1973)), a clarification or additional description of the plant, or even a wholesale substitution of the original description so long as … 1/2

1503.01(I): When a design is embodied in an article having multiple functions or comprises multiple independent parts or articles that interact with each other, the title must clearly define them as a single entity, for example, combined or combination, set, pair, unit assembly.

608.01(g): The description is a dictionary for the claims and should provide clear support or antecedent basis for all terms used in the claims.

… the entire delay was unintentional, including the period from discovery that the maintenance fee was not timely paid until payment of the maintenance fee. 2/2

2590(I): A person seeking reinstatement of an expired patent should not make a statement that the delay in payment of the maintenance fee was unintentional unless … 1/2

The preparation of claims to any claimed invention for which patent protection is desired and the inclusion of such claims with the application on filing will help ensure that the application satisfies the disclosure requirements of 35 U.S.C. 112(a) for any such claimed invention. 3/3

However, these minimal formal requirements should not be viewed as prescribing a best practice for the preparation and filing of a patent application. 2/3

601.01(a)(I): 35 U.S.C. 111(a) now provides minimal formal requirements necessary for an application to be entitled to a filing date to safeguard against the loss of a filing date due to a technicality. 1/3

… unless an amendment pursuant to 37 CFR 41.33(b)(2) rewriting such claims in independent form is filed within the period for seeking review under 37 CFR 90.3. 2/2

1214.06(I): Claims indicated as allowable but objected to prior to appeal because of their dependency from rejected claims will be treated as if they were rejected, … 1/2

Applicants must still provide priority and/or benefit information under the domestic benefit information heading or foreign priority information heading, as appropriate, in the application data sheet even if utilizing the reference filing provisions of 35 U.S.C. 111(c) and 37 CFR 1.57(a). 2/2

601.05(a)(I): The reference to a previously filed application in an ADS under 37 CFR 1.57(a) is not sufficient to establish a priority or benefit claim to that previously filed application. 1/2

2157: In the rare situation where it is clear that the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship under 37 CFR 1.48, Office personnel should reject the claims under 35 U.S.C. 101 and 35 U.S.C. 115.

… courts have looked to see if a reissue applicant was diligent in correcting the error(s) in the patent. 2/2

1403: While examiners should not make rejections based on lack of diligence (which does not include rejections under 35 U.S.C. 251 for a broadening reissue that is impermissibly filed outside of the two year time period set in 35 U.S.C. 251), … 1/2

2106.05(h): Examiners should be aware that the courts often use the terms “technological environment” and “field of use” interchangeably, and thus for purposes of the eligibility analysis examiners should consider these terms interchangeable.

The filing date will be the date of receipt of at least one claim. 2/2

601.01(e): If … a design application does not contain at least one claim, a “Notice of Incomplete Application” will be mailed to the applicant(s) indicating that no filing date has been granted and setting a period for submitting a claim. 1/2

… applicant may file the required petition and fee or give authorization to the examiner to make the petition of record and charge a specified fee to a deposit account. 2/2

706.07(f)(II)(H): Where an extension of time is necessary to place an application in condition for allowance (e.g., when an examiner’s amendment is necessary after the shortened statutory period for reply has expired), … 1/2

2111.01(V): there is a presumption that claim terms have their ordinary and customary meaning[,] and the specification must provide a clear and intentional use of a special definition for the claim term to be treated as having a special definition

2111.01(IV)(B): in some cases, disavowal of a broader claim scope may be made by implication, such as where the specification contains only disparaging remarks with respect to a feature and every embodiment in the specification excludes that feature.

additional statements of utility, even if not “credible,” do not render the claimed invention lacking in utility. 2/2

2107.02(I): regardless of the category of invention that is claimed (e.g., product or process), an applicant need only make one credible assertion of specific utility for the claimed invention to satisfy 35 U.S.C. 101 and 35 U.S.C. 112; 1/2

608.01(p)(I)(A)(2): Incorporating by reference material that was not incorporated by reference on filing of an application may introduce new matter.

710.05: The federal holidays under 5 U.S.C. 6103(a) [include] … Columbus Day, the second Monday in October.