Intro

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# MANUAL OF

# PATENT EXAMINING PROCEDURE

PROPERTY OF THE UNITED STATES GOVERNMENT

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## Introduction

### Constitutional Basis

The Constitution of the United States pro-
vides :

"ART. 1, SEC. 8. The Congress shall have
power . .. To promote the progress of science
and useful arts, by securing for limited times
to authors and inventors the exclusive right to
their respective writings and discoveries."

### Statutes

Pursuant to the foregoing provision of the
Constitution, Congress has passed a number of
statutes under which the Patent Office is organ-
ized and our patent system is established. The
provisions of the statutes can in no way be
changed or waived by the Patent Office. The
present laws relating to patents are various
sections of the Revised Statutes of 1874, de-
rived from the Patent Act of 1870, and numer-
ous amendatory and additional acts which
have been passed since that time. These have
been compiled as Title 35 of the United States
Code and are reprinted by the Patent Office
in a pamphlet entitled "Patent Laws." In
referring to a particular section of Patent Laws
there should ordinarily be given both the Re-
vised Statutes section number and the United
States Code citation, thus "R. S. 4886; 35
U. S. C. 31".

### Rules of Practice

One of the sections of the patent statutes,
namely, R. S. 483 ; 35 U. S. C. 6, authorizes the
Commissioner of Patents, subject to the ap-
proval of the Secretary of Commerce, to estab-
lish from time to time regulations, not incon-
sistent with law, for the conduct of proceedings
in the Patent Office. These regulations are set
forth in a Patent Office booklet entitled "Rules
of Practice of the United States Patent Office
in Patent Cases". The Rules of Practice have a
long history, going back to pamphlets of gen-
eral information to the public, first issued in
1836. The content has been determined by his-
tory, tradition and other factors. Primarily
the function of the Rules of Practice is to advise
the public of the regulations which have been

established in accordance with the statutes and
which must be followed before the Office. But
the Patent Office Rules of Practice have always
additionally included, as numbered rules, infor-
mational material, copies of sections of the
patent statutes, purely internal procedure, and
the like. It goes without saying that the Rules
of Practice govern the Examiners, as well as
applicants and their attorneys.

### Commissioner's Orders and Notices

From time to time, the Commissioner of
Patents has issued Orders and Notices relating
to various specific situations that have arisen
in operating the Patent Office. Notices and cir-
culars of information or instructions have also
been issued by the Supervisory Examiners
under authority of the Commissioner. Orders
and Notices have served various purposes in-
cluding directions to the examiners giving them
instructions, information, interpretations and
the like. Some may be for the information of
the public, advising what the Office will do
under specified circumstances.

### Decisions

In addition to the statutory regulations, the
actions taken by the Examiner in the examina-
tion of applications for patents are to a great
extent governed by decisions on prior cases.
Those dissatisfied with an Examiner's action
may have it reviewed. In general, it may be
stated that from that portion of the Examiner's
action pertaining to objections on formal mat-
ters, a petition for review may be taken to the
Commissioner of Patents (1002) and from that
portion of the Examiner's action pertaining to
the rejection of claims on the merits, an appeal
may be taken to the Board of Appeals (1201).
The distinction is set forth in Rules 181 and
191. The decision of the Commissioner on for-
mal matters is final but the decision of the
Board of Appeals on questions passed on by
it may be carried to the courts. See 1216.
In citing decisions as authority for his actions,
the Examiner should cite the decision in the
manner set forth in 707.06.