MPEP 1207.04 may be incorrectly interpreted to allow an examiner to re-open prosecution after appeal as final (under 37 CFR 1.113). In fact, we have experienced this on at least 4 occasions, generally with the sloppiest and/or laziest examiners. 37 CFR 41.37 sets forth the requirements for appeal briefs. Thereafter comes rule 41.39, which says the examiner "may" file an answer. If the examiner does file an answer, ...more »
Chapter 1300 - Allowance and Issue
Currently, Examiners provide a reason for allowance in most patent applications, but usually the reason is not as specific and explanatory as required by the MPEP. The reason is typically a statement such as, “The prior art fails to teach or suggest …” followed by a quotation of much of the claim. The quotation includes the claim element(s) that are the real reason for allowance but often includes other claim elements ...more »
The content of 37 CFR 41.37(c)(1) referenced in the body of the body of the MPEP is NOT the same as the content in the Rules Appendix and the latest rules shown on the Appeal Board sub-site.
Section 402.06 concerns procedures for an attorney to withdraw from representation of clients before the USPTO. The relevant rules were changed in 2008 (not reflected in the R-5, which is from 2006) and again in 2013. This section references Rule 10.40, which no longer exists. The current rule is now 11.116, and Form SB-83 (now AIA/83) is markedly different today.
University/research institute category of small entity is confounded by MPEP conflicting with CFR. Namely, the regulation (37 C.F.R. § 1.27) defines a small entity to include certain persons, small businesses, and, at 1.27(a)(3)(ii)(A), referring also to subsection (c), which, in turn, refers to subsection (f), of the same regulation, states that an eligible entity is one which (1) has not assigned the rights of the ...more »
The abstract length requirement in 1302.01 (limited to 150 words) is inconsistent with Abstract Example 2 in MPEP 608.01(b) section (E) which is 165 words in length.