Thanks very much for the 01-2018 publication! I am looking forward to enjoying the changes as I work with it. Would you be willing to provide a PDX index file to the downloadable PDF version, or point me to where it is? I can't find it on the MPEP page or in e9r-08-2017.zip. The 11-2015 publication included the "E9R-07.2015.pdx" index file, and I have made good use of that over the last two years. (The 11-2015 publication ...more »
Most Alice rejections I have received recently cite caselaw by name, but do not tell you how to find the decisions themselves. It occurred to me today that this may effectively prevent a pro se applicant from responding to such a rejection. I propose amending 706.03(a), form paragraph 7.05.015, to refer to the USPTO's web site for information not found in the Action. For example: (>>insertions<< marked) --- the claimed ...more »
I think 1893 (Nov. 2015) and its subsections could improve clarity on the national-stage status of amendments other than those made during Chapter II. Currently: - 1893.01(d) mentions that a translation in the national stage should incorporate any Rule 26 corrections or Rule 91 rectifications. - 1893.03(e), I. references the WIPO pamphlet of the application, but does not specify the effect of any republications. ...more »
In 1893.03(e), I.: The text notes that "If the international application is published in English, the Office will use the description, claims, abstract and drawings as published in the pamphlet for the U.S. national stage application under 35 U.S.C. 371." This statement is perfectly clear. However, I think it would benefit from some expansion. 1. I proposed expressly adding the logical consequence: "Therefore, any ...more »
509.03 is titled "Claiming small entity status." However, parts VI--X include information other than "how to claim," and part VII is how to *not* claim ("Removal of Status"). I request that parts I--X be changed to subsections 509.03(a)--509.03(j) so that they will appear in the PDF bookmarks, and so that the information in parts VI--X will be be easier to find. As always, thanks for considering this request!
Subject: MPEP 707.07(f), form paragraph 7.38 (p. 700-160, Nov. 2015) The current language says "Applicant’s arguments ... are moot because [they] do not apply to any of the references being used in the current rejection." However, I regularly see this paragraph in second 103 rejections when some references have been carried forward. Would you please update the language to match how it is used, or add a separate form ...more »
The headers at the top of each page of the MPEP PDF give the section number. As far as I can tell, it's the last section number on that page. For example, p. 2100-141 (Nov. 2015) ends with half a sentence of 2142, so the header reads "2142." However, the vast majority of text on that page is 2141.03. Would it be possible to clarify which text is part of which section in some way? At present, I regularly wind up reading ...more »
2165, I., p. 2100-279 (Nov. 2015), right column, cites Union Carbide v. Borg-Warner. The citation given is 550 F.2d 555. However, as far as I can tell, that is 550 F.2d *355* (three, not five). Would you please fix? Thank you!
Introduction (Nov. 2015), p. 1, right column, bottom, reads, in part: "The primary function of the rules is to advise the public of the rules which ... must be followed before the USPTO". Would you please rewrite the beginning part of that sentence for clarity? It seems to me a bit redundant. Suggestion: "The rules govern conduct of examiners, applicants, and patent practitioners before the Office. The rules are available ...more »
Fact pattern: A corporation is applying for a patent. A first inventor has signed the Assignment papers assigning that inventor's rights to the corporation. A second inventor is on vacation and cannot sign the Assignment before filing, but is under an obligation to assign to the corporation. MPEP 605.01, and the language in the ADS (PTO/AIA/14 (11-15)), are unclear about whether to list one or two Applicants in this ...more »
Can theatrical films or movies like "Back to the Future" be cited as art in an IDS? I am familiar with citing Youtube videos. Would it be necessary to paper file the IDS and include a DVD of the movie?
In the Introduction to the MPEP (or whatever prefatory section is preferred), add a short section on which terms are requirements and which describe best practice. Those without legal training sometimes interpret the term "should" similarly to the term "must." This seems to lead to confusion and complaints from those MPEP readers that the MPEP is "confusing" or "self-contradictory." Although some readers of the MPEP ...more »