MPEP - R - United States Patent and Trademark Office

1 Appendix R Consolidated Patent Rules - January 2018 UpdateTitle 37 - Code of Federal RegulationsPatents, Trademarks, and Copyrights [Editor Note: Current as of January 16, 2018. The Federal Register is the authoritative source and should beconsulted if a need arises to verify the authenticity of the language reproduced below. This Consolidated Rulesdocument incorporates the following rule revisions that became effective subsequent to the publication ofMPEP Revision (which was updated as of August 2017):(1) Rule on Attorney-Client Privilege for Trials before the Patent Trial and Appeal Board, 82 FR 51570 (November7, 2017); and(2) Setting and Adjusting Patent Fees During Fiscal Year 2017, 82 FR 52780 (November 14, 2017).]

2 ]CHAPTER I United States PATENTAND Trademark Office , DEPARTMENTOF COMMERCESUBCHAPTER A GENERALPATENTSPART 1 RULES OF PRACTICE IN Patent CASESPART 3 ASSIGNMENT, RECORDING AND RIGHTS OFASSIGNEEPART 4 COMPLAINTS REGARDING INVENTIONPROMOTERSPART 5 SECRECY OF CERTAIN INVENTIONS ANDLICENSES TO EXPORT AND FILE APPLICATIONS INFOREIGN COUNTRIESINDEX I RULES RELATING TO PATENTSPRACTICE before THE Patent ANDTRADEMARK OFFICEPART 10 [Reserved]PART 11 REPRESENTATION OF OTHERS before THEUNITED States Patent AND Trademark OFFICEINDEX II RULES RELATING TO REPRESENTATION OFOTHERS before THE United States Patent ANDTRADEMARK OFFICEPART 41 PRACTICE before THE Patent TRIAL ANDAPPEAL BOARDPART 42 TRIAL PRACTICE before THE Patent TRIALAND APPEAL BOARDPART 90 JUDICIAL REVIEW OF Patent TRIAL ANDAPPEAL BOARD DECISIONSSUBCHAPTER B ADMINISTRATIONPART 102 DISCLOSURE OF GOVERNMENTINFORMATIONPART 104 LEGAL PROCESSESSUBCHAPTER C PROTECTION OFFOREIGN MASK WORKSPART 150

3 REQUESTS FOR PRESIDENTIALPROCLAMATIONS PURSUANT TO 17 902(a)(2)CHAPTER I United States PATENTAND Trademark Office ,DEPARTMENT OF COMMERCESUBCHAPTER A GENERALPATENTSPART 1 RULES OF PRACTICE IN PATENTCASESG eneral ProvisionsGENERAL INFORMATION for non-trademarkcorrespondence with the United StatesPatent and Trademark to be transacted in to be conducted with decorumand of correspondence and of Patent , Patent application,or Patent -related of for taking action; Expiration onSaturday, Sunday or Federal of mailing or of correspondence by Priority MailExpress.

4 RECORDS AND FILES OF THE Patent ANDTRADEMARK open to the records open to (pre-AIA) Assignment records open topublic and certified applications preserved (pre-AIA) Patent applications preserved [Reserved]FEES AND PAYMENT OF application filing, search, andexamination application and reexaminationprocessing post allowance (including issue) supply issuance fees and payable in of [Reserved] of small entities and establishingstatus as a small entity to permit paymentof small entity fees; when a determinationof entitlement to small entity status andnotification of loss of entitlement to smallentity status are required; fraud on (pre-AIA) Definition of small entities andestablishing status as a small entity topermit payment of small entity fees; whena determination of entitlement to smallentity status and notification of loss ofentitlement to small entity status arerequired; fraud on the when small entity status is laterestablished.

5 How errors in small entitystatus are entity Processing ProvisionsPROSECUTION OF APPLICATION ANDAPPOINTMENT OF ATTORNEY OR may be represented by one ormore Patent practitioners or joint of (pre-AIA) Power of respecting patentapplications, reexamination proceedings,and other (pre-AIA) Correspondence respectingpatent applications, reexaminationproceedings, and other in a representative of power of attorney;withdrawal of Patent attorney or (pre-AIA) Revocation of power ofattorney; withdrawal of Patent attorney MAY APPLY FOR A (pre-AIA) Applicant for for (pre-AIA) When the inventor is for Patent by a legalrepresentative of a deceased or legallyincapacitated (pre-AIA) When the inventor is insane orlegally [Reserved] for Patent by joint (pre-AIA) Joint for Patent by an assignee,obligated assignee, or a person whootherwise shows sufficient proprietaryinterest in the (pre-AIA) Assigned inventions and [Removed and Reserved] (pre-AIA)

6 Filing when an inventor refusesto sign or cannot be of inventorship pursuant to 116 or correction of the name ororder of names in a Patent application,other than a reissue 2018 MANUAL OF Patent EXAMINING PROCEDURETHE requisites of an , paper, writing, margins,compact disc number, filing date, andcompletion of (pre-PLT (AIA)) Application number,filing date, and completion of (pre-AIA) Application number, filing date,and completion of of application to be filed together;filing for foreign to disclose information material (pre-AIA) Duty to disclose informationmaterial to by (pre-PLT) Incorporation by and mathematical formulae of information or copy ofpapers in application [Reserved] [Reserved] [Reserved]OATH OR s oath or (pre-AIA) Oath or statement in lieu of an oath (pre-AIA) Person making oath under (pre-AIA) Officers authorized toadminister oath or (pre-AIA)

7 Supplemental oath in lieu of language oaths and [Reserved] description and specification ofthe and of the to (s). data (2012-09-16 thru 2013-12-17) Applicationdata (pre-AIA) Application data of application benefit of earlier filing date andcross-references to other clauses not required in Patent (2012-09-16 thru 2013-12-17) Drawingsrequired in Patent (pre-AIA) Drawings required in of for to [Reserved]MODELS, EXHIBITS, or exhibits not generally admittedas part of application or [Reserved] of models, exhibits or of of computer program DISCLOSURE of information disclosure of information [Reserved]EXAMINATION OF [Reserved] of of action by the of for (pre-AIA)

8 Requirements for [Reserved] [Reserved] [Reserved]January 2018R-3 CONSOLIDATED Patent RULES - JANUARY 2018 filing date of a claimed inventionunder the Leahy-Smith America and ownership of the subjectmatter of individual BY APPLICANT AND by applicant or Patent owner to anon-final Office before final rejection or for continued and affidavits or otherevidence after final action and prior [Reserved] [Reserved] [Reserved] of making amendments [Reserved] [Reserved] [Reserved] of from refusal to admit procedures for limitedexamination after final rejection andrestriction OVERCOMING or declaration of attribution orprior public disclosure under theLeahy-Smith America Invents or declaration of prior inventionor to disqualify commonly owned patentor published application as prior or declarations traversingrejections or FOR REPLY BY APPLICANT.

9 ABANDONMENT OF period for reply to an Office for failure to reply withintime of of abandoned application, orterminated or limited [Reserved]JOINDER OF INVENTIONS IN ONE APPLICATION; inventions in one for of from requirement for presentation of claims fordifferent of , description and claim, oath (pre-AIA) Title, description and claim, oathor of application elements in adesign examination of , oath or (pre-AIA) Applicant, oath or and arrangement ofapplication elements in a plant for 2018 MANUAL OF Patent EXAMINING (pre-AIA) Applicants, specification, drawings, [Reserved] s oath or declaration for a (pre-AIA)

10 Reissue oath or of of multiple reissue Patent ; continuing duty [Reserved]PETITIONS AND ACTION BY THE to the not specifically provided of [Reserved]APPEAL TO THE Patent TRIAL AND to Patent Trial and Appeal [Reserved] [Reserved] [Reserved] [Reserved] [Reserved] of after a final decision of thePatent Trial and Appeal OF of (pre-AIA) Publication of application (pre-AIA) Patent application Publication of a reda