MPEP Section 2618, Copies of Prior Art (Patents and Printed Publications)

Executive summary:

This document contains one section of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Fifth Revision (August 2006). This page was last updated in July 2007. You may return to the section index to find a particular section. Alternatively, you may search the MPEP use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the MPEP in the pop-up list.

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2618 Copies of Prior Art (Patents and Printed Publications)

It is required that a copy of each patent or printed publication relied upon, or referred to, in the request be filed with the request (37 CFR 1.915(b)(4)). >If the copy provided is not legible, or is such that its image scanned into the Image File Wrapper system (IFW) will not be legible, it is deemed to not have been provided. An exception is color photographs and like color submissions, which, if legible as presented, will be retained in an "artifact" file and used as such.< If any of the documents are not in the English language, an English language translation of all necessary and pertinent parts is also required. >See MPEP § 609.04(a), subsection III.< An English language summary, or abstract of a non-English language document, is usually not sufficient. >There is no assurance that the Office will consider the non-English language patent or printed publication beyond the translation matter that is submitted.<

It is also helpful to include copies of the prior art considered >(via a 37 CFR 1.555 information disclosure statement - separate from the listing of the patents or printed publications relied upon as raising a substantial new question of patentability)< during earlier prosecution of the patent for which reexamination is requested. The presence of both the old and the new prior art allows a comparison to be made to determine whether a substantial new question of patentability is indeed present.

Copies of parent applications should also be submitted if the parent applications relate to the alleged substantial new question of patentability. For example, a parent application relates to the alleged substantial new question where the patent is a continuation-in-part and the question of patentability relates to support in the parent application for the claims.