1900

OCR transcription for search; preserved printed pages are authoritative

# Section 19. MISCELLANEOUS

## 19-1. Alien Property Custodian Cases

-2.
Examiners May Not Testify As Patent Experts

Former Examiner Not to Practice For Two Years
Before Division to Which He was Assigned

-4.
Official Gazette

-5.
Commissioner's Decisions

-6.
Records Kept In Examining Divisions

-7.
Reports Rendered by the Examining Divisions

-7-1.
What Should be Counted as an Action

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### 19-1. Procedure in Cases Seized by the Alion Property Custodian

Two carbon copies of all Office actions will be
mailed to the Alien Property Custodian and if there is
an attorney of record residing in the United States, a
copy will also be mailed to him.

If the attorney of record withdraws in a case
which has been seized, the examiner will notify the Alien
Property Custodian of such withdrawal, and if the applica-
tion is awaiting response to an Office action the examiner
will also notify the Alien Property Custodian of this fact
together with the date when response is due.

In all cases in which a copy of an Office action is
mailed to the Alien Property Custodian, an appropriate no-
tation to that effect will be plat sd on the original.

## 19-2. Examinere May Not Testify as Patent Experts

Inasmuch as public policy does not permit examiners
to decide, as judges in the Patent Office, questions upon
which they have been retained to give opinions as expert
witnesses in patent cases in the courts, every examiner who
shall testify as an expert in a patent case pending in any
court will be dismissed, unless he shall have so testified
involuntarily, upon compulsion by competent judicial
authority, and without retainer or preparation.

## 19-3. Former Examiner Not to Practice for Two Years Before Division to Which He was Assigned

No member of the examining corps upon resigning
will be registered to practice before the Patent Office
unless he agrees not to prepare or prosecute applications
in any of the classes examined in the division to which he
was assigned until two years from the date his resignation
takes effect.

Examiners tendering their resignationa will be re-
quired to sign the following statement before their resig-
nations will be approved:

I hereby agree not to prepare or prosecute,
nor to ald in the preparation or prosecution, of
any application in any class or classes examined
in any division in the Patent Office to which I

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was assigned, until two years after the date of
my severance from that division, or until two
years after the date of transfer of any such
class or classes from that division; this shall
not include any invention of my own unless it
conflicts with an application on file prior to
my resignation or discloses some feature of such
application not otherwise open to the public.

19-4.
The Official Gazette

The Official Gazette, (Rule 2.2) which appears
every Tuesday, contains the name and address of the appli-
cant, and of the assignee, if any, the filing dato, and
serial number of the application, the patent number, the
title of the invention, the number of patent olaims, and
the class and sub-class, one of the figures of the drawing
(if any), and one or more claims, of every patent in a
week's issue. In the case of a reissue patent there are
published the additional data of the serial number and
date of the original patent and original application; and
in the case of the design patent, the term of the patent.

Trade marks published to afford opportunity for
filing notice of opposition and Trade-Mark Registrations
Granted are also printed in the Gazette.

The above material forms the body of the Gazette;
but as this is the only official publication of the Office,
the first few pages of the Gazette are devoted to other
matters, such as; important communications from abroad,
notices to parties the Office has been unable to reach by
mail, disclaimers, adverse decisions in interferences, a
statement of the condition of work in the Patent Office,
changes in Rules, disbarments of attorneys, and selected
decisions of the Board of Appeals, of the Commissioner of
Patents, and of the United States Courts, and all of the
decisions in patent cases of the Court of Customs and
Patent Appeals and of the D. C. Court of Appeals, together
with a list of adjudicated patents and notices of patent
suits. These pages, in addition to appearing in the bound
volume of each number of the Gazette, are published in
leaflet form and for separate distribution. One of these
O.G. leaflets is placed on each examiner's desk when the
Official Gazette is published.

The subject matter of the leaflets is arranged by
one of the Law Examiners, but the arrangement of the in-
dexing of the Gazette is done by the Issue and Gazette
Branch.

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## 19-5.

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The decisions are collected and published in annual
volumes of Commissioner's Decisions. (See Rule 2.4)

## 19-6. Records Kept in Examining Divisions

The principal record book in the examining division
is the Register of Patent Applications in which are listed
the applications that have been assigned to the division
identified by name of applicant, title of invention, serial
number and filing date. Notation of attorney and assignee
is also made where such facts exist. The record also shows
the name of the assistant examiner to whom the examination
is entrusted and the class and subclass of prior art consi-
dered most pertinent for search, the history of each caso
in the matter of the successive actions taken in that divi-
sion, and finally the patenting or abandonment or transfer
of the case.

The examiners' pending case file, entitled "Joker
Book" in the Clerical Operations Manual, in book or card
form, contains a list of cases, identified by application
number and filing or amended date, awaiting action on each
examiner's desk.

The "Action Book", also described in the Clerical
Operations Manual, contains a list of examiner's completed
actions.

Records are also kept of all cases on appeal, in-
cluding those awaiting examiner's statement as well as
those forwarded, cases involved in interference, secret
cases, dual prosecution cases temporarily in or out of
the division, cases involving classification questions or
requirements of division, and applications or patents
borrowed .

## 19-7. Reporta Rendered by the Examining Divisiona Weekly Work Report

For the Weekly, Monthly, and quarterly Work
Reports and the Semi-Annual Inventory see Sections 60-66
inclusive of the Clerk's Manual.

19-7-1.
What Should be Counted as Actions

For those items that the Examiners should receive
credit as actions see Sections 2-2.1 of the Clerk's
Manual .