1700

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1700 Miscellaneous

1701
Examiners May Not Testify as Patent Experts
1702
Restrictions on Examiners Resigning From the
Office

1703
Official Gazette

1704
Records Kept in Examining Divisions

1705
Weekly Work Reports and Actions of Examiners
To Be Counted

1706
Transfer of an Entire Class or Subclass

## 1701 Examiners May Not Testify as Patent Experts

Inasmuch as public policy does not permit Exam-
iners to decide, as judges in the Patent Office, ques-
tions 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 ex-
pert in a patent case pending in any court will be
dismissed, unless he shall have so testified involun-
tarily, upon compulsion by competent judicial au-
thority, and without retainer or preparation.
(Notice of March 6, 1880.)

## 1702 Restrictions on Examiners Re- signing From the Office

Extract from Rule 341, Registration of Attorney and
Agents. (g) Former examiners. No person who has
served in the examining corps of the Patent Office will
be registered after termination of his services, nor, if
registered before such service, be reinstated, unless he
undertakes (1) not to prosecute or aid in any manner
in the prosecution of any application pending in any
examining division in which he served, on the date he
left said division ; and (2) not to prepare or prosecute
nor to assist in any manner in the preparation or prose-
cution of any application of another filed within two
years after the date he left such division, and assigned
to such division, without the specific authorization of
the Commissioner. Associated and related classes in
other divisions may be required to be included in the
undertaking or designated classes may be excluded. In
case application for registration or reinstatement is
made after resignation from the Office, the applicant
will not be registered, or reinstated, if he has prepared
or prosecuted, or assisted in the preparation or prosecu-
tion of any such application as indicated in this
paragraph.

### 1703 The Official Gazette

The Official Gazette, which appears every
Tuesday, contains the name and address of the
applicant, and of the assignee, if any, the filing
date, and serial number of the application, the
patent number, the title of the invention, the

number of patent claims, 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 periodical
of the Office, the first few pages of the Gazette
are devoted to other matters, such as; notices
to parties the Office has been unable to reach by
mail, disclaimers, adverse decisions in inter-
ferences, a statement of the condition of work
in the Patent Office, changes in Rules, disbar-
ment 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, for the District of Columbia,
together with a list of adjudicated patents and
notices of patent suits. These pages, in addi-
tion to appearing in the bound volume of each
number of the Gazette, are published in leaflet
form 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 arrange-
ment of the indexing of the Gazette is done by
the Issue and Gazette Branch.

## 1704 Records Kept in Examining Divi- sions

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 is also
made. The record also shows the name of the
assistant Examiner to whom the examination is
entrusted and the class and subclass of prior art
considered most pertinent for search, the his-
tory of each case in the matter of the successive
actions taken in that division, and finally the
patenting or abandonment or transfer of the
case.

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The Examiners' pending case file, entitled
"Joker Book" in the Clerk's 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
Clerk's Manual, contains a list of Examiner's
completed actions.

Records are also kept of all cases on appeal,
including those awaiting Examiner's answer as
well as those forwarded, cases involved in inter-
ference, secret cases, patentability report cases
temporarily in or out of the division, cases in-
volving classification questions or requirements
of division, and applications or patents
borrowed.

## 1705 Weekly Work Report and Actions of Examiners To Be Counted Thereon

The weekly work report will ordinarily be
made as of the close of business on Friday and it
must include all cases received and all cases
acted on from 8: 30 a. m. Monday to 5: 00 p. m.
Friday.

The following only are counted as actions:

1\. Regular actions in new and amended cases.

2\. One action for each application which consists
only in suggesting claims for interference and one
for each application in declaring each interference.

3\. Examiner's statements in answer to petitions
from his actions.

4\. Examiner's answers on appeals.

5\. Transfers of individual cases which are up for
action previously entered in the Examiner's register.
Where an entire class or subclass is transferred,
credit for actions is not given the assistant Exam-
iners to whom such cases are respectively assigned.

6\. Decisions on motions in interference.

7\. Patentability reports.

8\. Answers to petitions to revive.

9\. Letter advising of entry or non-entry of amend-
ment after final action.

By "regular" action is meant rejections, including
requirements for division; letters or allowances by

the Examiner as the result of the examination of a
new application or the reconsideration or re-exam-
ination of an amended application; requirements
for formal changes or corrections; actions of the
Examiner applying or carrying into effect final de-
cisions in interference, either on motions or on
priority; actions on cases remanded by an appellate
tribunal for reconsideration in view of affidavits or
proposed further amendments by appellants. Where
more than one amendment is filed in any case before
it is reached for consideration of the first of such
amendments, only one action will be counted in
connection with all such amendments.

The following should not be counted as actions:
Supplemental actions citing additional references
or correcting the data of references of record; Ietter
acknowledging receipt of communications (new or
supplemental oaths, orders for corrections of draw-
ings, etc.), which do not bring the application up
for action; Examiners' amendments; amendments
under Rule 312; petitions to make cases special, and
status letters.

Examiners are expected to make a reasonably
careful examination of applications when they are
first received in their divisions to determine the
proper classification before entering them on the
register. Applications will not be entered on the
Examiner's register for the purpose of counting
them as actions by transfer.
(Extract from Order 3179.)

See also the Clerk's Manual, section 2-2-1.

### 1706 Transfer of an Entire Class or Subclass

Where an entire class or subclass is trans-
ferred from one division to another, a list
(original and two carbons) of all pending ap-
plications transferred therewith, designating
the respective divisions from which and to
which transferred, must be prepared by the
Examiner transferring the class or subclass.
This list must give the name of the inventor and
serial number arranged in numerical order.
The original is sent to the Application Branch
and one carbon sent to the division receiving the
class or subclass.