1700

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1700

1701

Examiners Not to Express Opinion on Valid-
ity nor Testify as Patent Experts

1702

1703
1704

1705

Restrictions on Examiners Resigning From
the Office
Official Gazette
Records Kept in Examining Groups
Examiner's Work Report and Actions To Be
Counted
Disclosure Documents

1706

1710

U.S .- German Search Exchange

1710.01
U.S. Origin Application

1710.02
German Origin Application

1711

U.S .- Philippines Search Exchange

1701
Examiners Not To Express Opin-
ion on Validity Nor Testify as
Patent Experts [R-21]

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.

Congress, in 35 U.S.C. 282, has endowed
every patent granted by the Patent Office with
a presumption of validity. Public policy de-
mands that every employee of this Office re-
frain from expressing to any interested person
any opinion or view as to the invalidity of any
U.S. Patent. The question of validity or in-
validity is exclusively a matter for the courts
to determine. Each member of the Examining
Corps is cautioned to be especially wary of any
inquiry from any person outside the Patent
Office (including any employee of another
government agency), the answer to which
might indicate that a particular patent should
not have been issued.

Whenever an Examiner is asked or sub-
poenaed to testify in a suit concerning a pat-
ent, trademark registration, or application for
either, he is directed to report that fact im-
mediately to the Solicitor.

Examiners are cautioned against answering
inquiries from any person outside the Patent
Office as to whether or not a certain reference

# Miscellaneous

was considered and, a fortiori, whether or not
a claim would have been allowed over that
reference. This applies to anything in the
patented file, including the extent of the field
of search and any entry relating thereto. The
record of a patented file must speak for itself.
Practitioners can be of material assistance in
this regard by refraining from making such in-
quiries of members of the Examining Corps.
Answers to inquiries of this nature must of
necessity be refused, and such refusal should be
considered neither discourteous nor an expres-
sion of opinion as to validity.

Also, Examiners are reminded that, in view
of the long established policy of the Patent
Office to refuse to permit members of the staff
of the Patent Office to testify in patent suits,
they should, before allowing an application, de-
termine that the written record is accurate and
complete.

## 1702 Restrictions on Examiners Re- signing From the Office [R-21]

Extract from Rule 541, 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 during his period of service therein ;
and (2) not to prepare or prosecute nor to assist in
any manner in the preparation or prosecution 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.

In the above rule, "examining division" is
interpreted as synonymous with "examining
group".

See also section 309.

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1703

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### 1703 The Official Gazette [R-21]

The Official Gazette reports every Tuesday
the patents, design patents and trademark reg-
istrations issued and defensive publications
published on that day. As to sach patent, the
following information is given :

(1) the name and (2) the city and state of
residence of the applicant with the Post Office
address in the case of unassigned patents, and
(3) the same data for the assignee, if any, (4)
the filing date, and (5) the serial number of the
application, (6) the patent number, (7) the title
of the invention, (8) the number of claims, (9)
the U.S. classification by class and subclass,
(10) a selected figure of the drawing, if any,
except in the case of a plant patent, (11) an ab-
stract of the disclosure, (12) international clas-
sification, (13) U.S. parent application data, if
any, and (14) foreign priority application data,
if any. In the case of a reissue patent there are
published the additional data of the number
and date of the original patent and original
application; and in the case of a design patent
the term of the patent.

The Official Gazette also includes an illus-
tration of each trademark published for oppo-
sition, a list of trademarks registered and other
trademark information, decisions in patent and
trademark cases rendered by the courts and
the Patent Office, notices of patent and trade-
mark suits, indexes of patents, disclaimers filed,
list of patents available for license or sale, and
general information such as orders, notices,
changes in rules, changes in classification, cer-
tain adverse decisions in interferences, the con-
dition of work in the Office, disbarment and
registration of attorneys, and notices to parties
not reached by mail.

The patent and trademark decisions include
in particular those of the United States Court
of Customs and Patent Appeals, the U.S.
Supreme Court, and the U.S. Court of Ap-
peals for the District of Columbia Circuit, and
selected decisions of the Commissioner of
Patents and Board of Appeals. These decisions
constitute such important statements of the law
that the notice and decision section is sep-
arately printed in leaflet form and is distri-
buted to the Examiners.

An annual subscription to the Official
Gazette costs $78 ($20 additional for foreign
mailing). Single copy $1.50.

The following parts of the Gazette may be
purchased independently of the remainder of
the publication. They are issued on the same
date as the Gazette.

Patent Abstract Section. Reprint of the
patent section primarily for the benefit of those
whose principal interest is technical informa-

tion. Annual subscription $54 ($14 additional
for foreign mailing). Single copy $1.25.

Decision Leaflets. Decisions of the Commis-
sioner of Patents and U.S. Courts; register of
patents available for license or sale; tabulation
of condition of work in each examining op-
eration. Annual subscription $10 ($2.50 addi-
tional for foreign mailing). Single copy 20
cents.

Trademark Supplement. Trademark notices,
trademark applications published for opposi-
tion, list of trademark applicants, classified list
of registered trademarks. Annual subscription
$20.50 ($5.75 additional for foreign mailing).
Single copy 40 cents.

Orders should be addressed and remittances
made payable to Superintendent of Documents,
U.S. Government Printing Office, Washington,
D.C. 20402.

## 1704 Records Kept in Examining Groups [R-21]

The principal records kept in the Examining
Groups are two sets of cards, Form PO-205
which are arranged numerically and Form
PO-206, of which those awaiting action are
arranged by individual Examiners. Each card
contains data concerning the applications that
have been assigned to the Groups, identified by
name of applicant, title of invention, serial
number and filing date. Notation of attorneys
is also made. Each set of cards also shows the
name of the Examiner to whom the examina-
tion is entrusted or the assigned docket desig-
nation and the class and subclass considered
most pertinent for examination, the successive
actions taken, and finally the patenting or
abandonment or transfer of the case.

Miscellaneous records are also kept relating
to matters such as cases on appeal, cases in-
volved in interference, patentability report
cases temporarily in or out of the Groups,
cases involving classification questions and ap-
plications or references charged out.

## 1705 Examiner's Work Report and Actions To Be Counted Thereon [R-21]

All reporting of Examiner's production,
docket, and time activities is on a bi-weekly
basis corresponding to the period covered by the
Time and Attendance Reports, PO-516.

Data Processing Branch makes the following
reports for each art unit :

Examiner's Bi-Weekly Docket Activity Re-
port, PO-290-This report covers infor-
mation regarding the new and amended appli-
cations awaiting action. The information is

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from the PO 680 prepared by the clerk
and from PO-526 Case Disposition Record
Cards prepared by the Examiner.

Examiner's Bi-Weekly Time and Activity
Report, PO-912 -- This report is based on the
Examiner's Case Action Record, Case Action
Correction, Case Disposition, and Substitution
Cards, PO-525, PO-531, PO-532 and PO-533,
respectively.

The dates of the various desks shall be ad-
vanced and reported as the actions are counted.
The oldest dates of the Group reported shall not
be advanced except as the actions are mailed.

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 inter-
ference and one for each application in declar-
ing each interference.

3\. Examiner's statements in answer to peti-
tions from his actions.

4\. Examiner's answers on appeals.

5\. Decisions on motions in interference.

6\. Letters advising of entry or nonentry of
amendment after final action.

7\. Letter advising applicant that express
abandonment has taken place and the file will
be sent to the Abandoned Files Unit in due
course.

8\. Declaration or redeclaration of an inter-
ference.

By "regular" action is meant rejections, in-
cluding requirements for restriction ; letters or
allowances by the Examiner as the result
of the examination of a new application or
the reconsideration or reexamination of an
amended application; requirements for formal
changes or corrections; actions of the Exam-
iner 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 ac-
tions: Examiner's Amendments; supplemental
actions citing additional references or correct-
ing the data of references of record; letters
acknowledging receipt of communications (new
or supplemental oaths, orders for corrections of
drawings, etc.), which do not bring the appli-
cation up for action; letters stating that the
Notice of Allowance will be sent in due course
and answers to petitions to revive or to make
cases special, amendments under Rule 312, and

to status letters. Transfers of individual cases
and patentability reports are not counted as
actions, but credit is given for the time spent.

Examiners are expected to make a resson-
ably careful examination of applications when
they are first received to determine the proper
classification before entering them on the
register.

Non-Examining time is listed on Examiner's
Periodic Record of "Other" Time PO-690E
Examiners should check this in order to make
sure that they are properly credited with such
time.

1706 Disclosure Documents [R-21]

The Patent Office accepts and preserves, for
a limited time, "Disclosure Documents" as evi-
dence of the dates of conception of inventions.

### THE PROGRAM

A paper disclosing an invention and signed
by the inventor or inventors may be forwarded
to the Patent Office by the inventor (or by any
one of the inventors when there are joint in-
ventors), by the owner of the invention, or by the
attorney or agent of the inventor(s) or owner.
It will be retained for two years and then be de-
stroyed unless it is referred to in a related
patent application within two years.

The Disclosure Document is not a patent ap-
plication, and the date of its receipt in the
Patent Office will not become the effective filing
date of any patent application subsequently
filed. However, like patent applications, these
documents will be kept in confidence by the
Patent Office.

This program does not diminish the value of
the conventional witnessed and notarized rec-
ords as evidence of conception of an invention,
but it should provide a more creditable form of
evidence than that provided by the popular
practice of mailing a disclosure to oneself or an-
other person by registered mail.

### CONTENT OF DISCLOSURE DOCUMENT

Although there are no restrictions as to con-
tent and claims are not necessary, the benefits
afforded by the Disclosure Document will de-
pend directly upon the adequacy of the dis-
closure. Therefore, it is strongly urged that the
document contain a clear and complete explana-
tion of the manner and process of making and
using the invention in sufficient detail to enable
a person having ordinary knowledge in the field
of the invention to make and use the invention.
When the nature of the invention permits, a
drawing or sketch should be included. The use
or utility of the invention should be described,
especially in chemical inventions.

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#### PREPARATION OF THE DOCUMENT

The Disclosure Document must be limited to
written matter or drawings on paper or other
thin, flexible material, such as linen or plastic
drafting material, having dimensions or being
folded to dimensions not to exceed 816 by 13
inches. Photographs also are acceptable. Each
page should be numbered. Text and drawings
should be sufficiently dark to permit repro-
duction with commonly used office copying
machines.

## OTHER ENCLOSURES

In addition to the fee described below, the
Disclosure Document must be accompanied by a
stamped, self-addressed envelope and a separate
paper in duplicate, signed by the inventor, stat-
ing that he is the inventor and requesting that
the material be received for processing under the
Disclosure Document Program. The papers will
be stamped by the Patent Office with an identi-
fying number and date of receipt, and the
duplicate request will be returned in the self-
addressed envelope together with a notice indi-
cating that the Disclosure Document may be
relied upon only as evidence and that a patent
application should be diligently filed if patent
protection is desired. The inventor's request
may take the following form:

"The undersigned, being the inventor of the
disclosed invention, requests that the enclosed
papers be accepted under the Disclosure Docu-
ment Program, and that they be preserved for
a period of two years."

# DISPOSITION

The Disclosure Document will be preserved
in the Patent Office for two years and then will
be destroyed unless it is referred to in a related
patent application filed within the two-year
period. The Disclosure Document may be re-
ferred to by way of a letter of transmittal in
a new patent application or by a separate letter
filed in a pending application. Unless it is de-
sired to have the Patent Office retain the Dis-
closure Document beyond the two-year period,
it is not required that it be referred to in a pat-
ent application.

FEE

A fee of $10 is charged for this service. Pay-
ment must accompany the Disclosure Document
when it is submitted to the Patent Office.

## WARNING TO INVENTORS

The two-year retention period should not be
considered to be a "grace period" during which
the inventor can wait to file his patent applica-
tion withont possible loss of benefits. It must
be recognized that in establishing priority of in-

vention an affidavit or testimony referring to a
Disclosure Document must usually also estab-
lish diligence in completing the invention or in
filing the patent application since the filing of
the Disclosure Document.

Inventors are also reminded that any public
use or sale in the United States or publication of
the invention anywhere in the world more than
one year prior to the filing of a patent applica-
tion on that invention will prohibit the granting
of a patent on it.

If the inventor is not familiar with what is
considered to be "diligence in completing the
invention" or "reduction to practice" under the
patent law, or if he has other questions about
patent matters, the Patent Office advises him to
consult an attorney or agent registered to prac-
tice before the Patent Office. A Directory of
Attorneys and agents Registered to Practice Be-
fore the U.S. Patent Office is available for $1
from the Superintendent of Documents, U.S.
Government Printing Office, Washington, D.C.
20402. Patent Attorneys and agents may be
found in the telephone directories of most major
cities. Also, many large cities have associations
of patent attorneys which may be consulted.

### 1710 U.S .- German Search Exchange [R-21]

The German and U.S. Patent Offices have ini-
tiated a continuing program for exchanging
search results in cases where applications for
the same inventions are filed in both countries.
In general, the plan provides that where an
application is filed in the U.S. and LATER a
corresponding application claiming U.S. prior-
ity is filed in Germany (U.S. origin applica-
tion), the U.S. search results are sent to the Ger-
man Patent Office after the first action on the
merits. Conversely, the U.S. Patent Office re-
ceives a list of references cited by the German
examiner in his action on an application filed
first in Germany and later in the U.S. (German
origin application).

The Office of Patent Services, primarily
through the newly set up Foreign Exchange
Section, is responsible for processing all matters
in connection with the exchange program in co-
operation with the Examining Groups.

### 1710.01 U.S. Origin Applications [R-21]

The German Patent Office will identify Ger-
man applications which refer to a prior appli-
cation for patent in the U.S. for the same in-
vention, and request a search report from the
U.S. This request is on a printed sheet (blue),
designated by them as Form B, which gives the

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serial number of the U.S. application, and
the Application Number of the German
application.

The Foreign Exchange Section of Special
Services receives and processes the forms.
Where the application has been disposed of or
has already received an action on the merits, the
Foreign Exchange Section will prepare from
the files the list of citations for the German
office. If the U.S. application has not yet been
acted on, a printed Notice is placed in the inside
left section of the file jacket to advise the Ex-
aminer and the Examining Group that the
search results will be furnished Germany when
the action is written. This Notice also contains
information to assist the Group in handling
such cases.

The application will be acted on by the Ex-
aminer when its regular turn is reached except
that if it is over 24 months old or when it be-
comes 24 months old, it is to be made "Special"
for the purpose of the first action, or if it is
"Special" for some other reason.

When preparing the first action on the merits
which contains reference citations, the Exam-
iner, when filling out PO-892, Notice of Refer-
ences Cited, will check the box at the bottom
marked "Foreign Exchange" and will detach
the Notice and include it in the folder with
PO-892 which is forwarded to the Reference
Order Section.

If the first action on the merits does not cite
any references, or if the application is being
passed to issue on the first action, the clerk will
check the appropriate place on the Notice and
return it to the Foreign Exchange Section.

#### 1710.02 German Origin Applications [R-21]

In the case of a U.S. application which refers
to a prior German application for the same in-
vention, German search results are requested by
the Foreign Exchange Section when the U.S.
applications are received in Application
Branch. A form, PO-952, identifying the U.S.
and German applications is completed and for-
warded to the German Patent Office. At the
same time, a Notice containing information to
assist the Group in handling the application is
inserted in the left inside section of the file
jacket to advise the Group that search results
may be expected.

In addition to the newly filed applications,
cases already pending are included in the pro-
gram. The Foreign Exchange Section will
identify and locate applications in the Group,
insert a copy of the Notice in the file, and send a
request for search results on PO-952 to the
German Patent Office.

If the Examiner notices an application in
which there is a prior filed German applica-
tion but which has not been marked by placing
therein the Notice, he may in his own discretion
request the German search results through the
Foreign Exchange Section, if there is sufficient
time before the case is to be reached for action.

The search report, on Form PO-952 (Form
A), when received from Germany, together
with copies of any references cited, will be for-
warded to the Examining Group to be placed
in the file, by the Foreign Exchange Section.

Normally, the search report is expected to be
received before the U.S. application is reached
for action in regular course. If it is not in the
file of the application when it is reached for ac-
tion, an inquiry may be made of the Foreign
Exchange Section to ascertain if it has been
received and is in process. But otherwise ex-
amination of the application is not to be de-
ferred to await a search report. If one is re-
ceived after the Examiner's action, the refer-
ences are to be considered in the same manner as
references being considered for citation in the
second action.

When the Examiner is acting on a case in
which a search report citing references has been
received from Germany (copies of the refer-
ences will have been placed in the file), he is to
proceed with his own search and examination of
the application in the usual manner, but taking
advantage of any assistance furnished by the
references cited by the German examiner; for
example, features or anticipations adequately
supplied need not be searched for again. The
references cited by the German examiner, as
well as any additional ones found, are to be con-
sidered, and if pertinent, cited and used in the
usual manner. References should not be cited
merely because they have been listed by the Ger-
man Patent Office.

As indicated in the joint report published at
838 OG 1225-6, May 23, 1967, an exchange at the
present time cannot completely replace the nec-
essity for each office to conduct its own search.
In particular, it should be noted that a U.S.
patent which issued after the German filing
date, but which has an earlier filing date, cannot
be used as a reference in the German case and
that the German examiner presumably will not
have searched such patents, assuming that they
had reached Germany. Hence, particular at-
tention should be paid to searching recent U.S.
patents. Also, the German examiner searches
according to a classification system developed
along principles somewhat different from the
U.S. classification, and references in related or
analogous arts are not used to the same extent
as here.

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In recording the field of search on the file
jacket, the Examiner should indicate in the
usual manner those sub-classes in which he has
made his usual search; where he has found it
necessary to make only a partial or updating
search, the listing of the sub-classes thus
searched should be so marked.

The search report and the Notice are removed
from the file when the application is disposed
of and retained in the Foreign Exchange
Section.

#### 1711 U.S .- Philippines Search Ex- change [R-21]

The United States-Philippines search ex-
change program involves patent applications
filed in the United States which are subse-
quently followed by corresponding applications
filed in the Republic of the Philippines and pat-
ent applications filed in the Philippines subse-
quently followed by corresponding applications
filed in the United States.

The program will operate as follows:

The applicant will file his application in the
UT.S. Patent Office which will process the appli-
cation in the normal manner and examine the
application in the usual time sequence.

If the applicant should later file a correspond-
ing application in the Philippines Patent Office,
he may elect to use the special filing procedure.
Under this special filing procedure, applicant
files his application in the Philippines accom-
panied by a notice of election to participate in
the special procedure; which notice of election
contains a certification that the description (ex-
cluding references to related applications).
claims and drawings are identical to those of
the corresponding application originally filed
in the United States. The earlier filed applica-
tion must be fully identified; and, in applica-
tions without a claim of priority, a certified copy
of the earlier filed U.S. application must be sub-
mitted to the Philippines Patent Office. In addi-
tion, applicant must also agree that all amend-
ments to his U.S. application will also be made
with respect to his application filed in the Phil-
ippines.

In the U .S. Patent Office, applicant will regu-
larly file two copies of each amendment, one
copy must be marked "Copy for Philippines
Patent Office." U'pon termination of prosecution
the U.S. Patent Office shall remove all copies
so marked from the U.S. file and promptly for-
ward the same to the Philippines Patent Office.

Election forms for participation in this spe-
cial program must be signed in duplicate and
simultaneously accompany the application to be
filed in the Philippines.

Upon receipt of properly filed notice of elec-

tion, the Philippines Patent Office will notify
the U.S. Patent Office of the election by for-
warding one copy of the election forms to the
U.S. Patent Office. The Philippines Patent
Office will defer action on the Philippines appli-
cation pending receipt of information as to the
disposition of the application by the U.S. Patent
Office. If no such information is received by the
Philippines Office within a reasonable amount
of time from the date of filing in the Philip-
pines, the Philippines Office may, either on its
own initiative, or at applicant's request, inquire
as to the status of the U.S. application and, if
desired, proceed with its own independent ex-
amination.

Upon disposal of the application by the U.S.
Patent Office, appropriate information will be
sent to the Philippines Patent Office which will
include all necessary identifying data, whether
allowed or abandoned, notice of allowance, cop-
ies of documents cited during examination, a
copy of the last office action and, when neces-
sary, any earlier actions which may be included
by reference in the last action. The Philippines
Office will then make their own complete office
action based upon the claims as amended with
the U.S. Patent Office, performing whatever
checks desired and search for copending inter-
fering applications. Alternatively, the Philip-
pines may request applicant to show cause why
the results of the U.S. examination should not
be accepted in the Philippines. All avenues of
appeal will remain open to the applicant.

Where copending applications are cited and
applied during examination in the U.S. Patent
Office, full examination will not be forwarded
to the Philippines Patent Office, and the fact
that a U.S. copending application was cited
would be noted as a matter of information, since
such references are inapplicable in the Philip-
pines.

Where the application originates in the Phil-
ippines Patent Office and is subsequently filed in
the U.S. Patent Office, a similar procedure as
outlined above consonant with U.S. Law will
be followed.

It is believed that this program will facilitate
the handling of U.S. origin applications filed in
the Republic of the Philippines resulting in a
savings in time and expense of prosecution to
U.S. applicants.

Election forms for participation in this spe-
cial program are now available from The
Foreign Exchange Section, Office of Patent
Services.

#### 1712 U.S .- Swedish Search Exchange [R-22]

A program for the exchange of search results
between the patent offices of Sweden and the

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United States was initiated in February 1969.
The program involves patent applications filed
in one country which are subsequently followed
by corresponding applications filed in the other.
The program operates as follows:

The applicant files an application in the U.S.
Patent Office which then processes the applica-
tion in the customary manner and in the usual
time sequence.

If the applicant later files an application in
Sweden claiming the priority of the U.S. appli-
cation, the Patent Office of Sweden notifies the
U.S. Patent Office of this filing by forwarding

a request for a list of the references cited by the
U.S. Examiner in the first office action on the
merits.

Where the application originates in Sweden
and is subsequently filed in the U.S. Patent
Office, a similar procedure is followed whereby
the U.S. Office requests and the Swedish Office
supplies a list of references cited by the
Swedish examiner.

This program, which involves only the fur-
nishing of listings of references cited, could
improve the quality of the patents granted by
each office.

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