Discuss the Manual of Patent Examining Procedures (MPEP)

706.07(a) discusses the fact that an action cannot be made final if a new ground of rejection is not necessitated by amendment and/or Applicant's IDS. However, it provides no information pertaining to what actually constitutes a new ground of rejection. The MPEP Appeal section; however, 1207.03(a), provides substantive guidance on what constitutes a 'new rejection' in an Examiner's Answer which appears also to be applicable... more »

The second paragraph of MPEP 706.02(f)(1), section II (the bottom of the right column on page 700-37) reads "all references to 35 USC 102 in the examples and flowcharts below are to the version of 35 USC 102 in effect on March 15, 2012 (the pre-AIA version)."

While this is technically true, I believe that "March 15, 2012" was intended to read "March 15, 2013," one day before the first-inventor-to-file provisions of the... 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 »

when an inventor submits a new idea to be patented without help from a patent attorney it should be automatically placed into the correct category. Either Utility Patent, if it is truly a utility patent, or Design patent, if that is truly what it is. This would save a lot of time and money on everyone's part.
For instance, I submitted my provisional application for an idea on my own and because i thought that i had to... more »

MPEP 1309.02 says applications with errors preventing issue "are placed on the examiner's 'expedited' tab in eDan and should be taken up for immediate action." We have not used eDan in several years, and I think it was even removed from our computers nearly four years ago. So "eDan" should be replaced either with "DAV" or "PE2E-DAV."

The June 2020 revision of the MPEP deleted the following sentence: "USPTO personnel need not give patentable weight to printed matter."

You need to add it back for two reasons.

First, the MPEP is supposed to reflect Office policy, and it is established Office policy that USPTO personnel need not give patentable weight to printed matter. Specifically, this policy is established by the precedential holding of Ex parte... more »

The second sentence of 2111.05 reads "Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter."

 

The word "comprised" is synonymous with "included" or "contained." It does not make sense to refer to claim limitations "comprised of" printed matter, because it does not make sense to refer to claim limitations being "included of" printed matter or "contained... more »

Wow - first idea in this chapter!

 

Anyway, 402.10 (Nov. 2015) (p. 400-19, right column), first paragraph, says "Papers revoking ... will not be accepted ... when signed by less than all". I believe that should read "by fewer than all." Similarly, the title should "fewer" instead of "less." Thanks!

MPEP 140, I. (Jan. 2018), at 100-35--36, is titled "Expedited Foreign Filing License." It references 37 CFR 5.12(b), which relates to a "petition for license." Would the Office please clarify what "Expedited" means here?

For most petitions, the Applicant can submit a separate petition under 1.182 to request expedited consideration of the substantive petition. However, as far as I know, there is only one type of petition... more »

Is there a reason why the USPTO doesn't allow transfer of CRFs from a parent case without a paper copy? My understanding of how the Office is interpreting the transfer rules is that you can only request transfer of the CRF if you also file a paper copy or PDF copy of the sequence listing. They will not allow transfer if you have an incorporation-by-reference in lieu of the paper copy of PDF.

It would make a lot more... more »

The URLs for the http://mpep.uspto.gov site are not currently friendly and it can be difficult to determine what a link might lead you to.

The link for MPEP 1200 is currently: http://mpep.uspto.gov/RDMS/detail/manual/MPEP/current/d0e18.xml#/manual/MPEP/DC1_FPindexR-07.2015/d0e122292.xml

It would be helpful if it were something more like this: http://mpep.uspto.gov/e9r072015/MPEP/1200

The link for 35 USC 101 is currently:... more »

MPEP 2106.04(a)(2)(II.)(A.) introduces the full citation for Intellectual Ventures I LLC v. Symantec Corp., which is then relied upon for the pincite for the rest of the MPEP.

However, the first full citation to this case is missing its identification of the Federal Circuit in the last part of the citation. It just provides the year of the decision, which is the form that is usually reserved for when it is otherwise... more »

Eighteen portions of the newly-edited 2106 place periods outside of quotes. This is still not generally accepted in American grammar, and is inconsistent with the section as a whole (eighty-four instances of periods within the quoted text).

 

There are also twenty-five great number of commas outside of quotes (as opposed to thirty-two within).

MPEP Sec. 602.01(c)(1) cites the wrong version of CFR 1.48. Specifically, it cites the pre-aia version and not the latest version.

Could the sentence saying that serious burden on the examiner be corrected back to what it said in the previous version (there is clearly said it's inapplicable). Now the language where this is first discussed appeared to be missing something