MPEP Section 705.01(a), Nature of P.R., Its Use and Disposal

Executive summary:

This document contains Section 705.01(a) ("Nature of P.R., Its Use and Disposal ") of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Eighth Revision (July 2010). This page was last updated in January 2011. You may return to the section index to find a particular section. Alternatively, you may search the MPEP using the search box that appears on the left side of every page of BitLaw--you may restrict your search to the MPEP on the search results page.

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705.01(a) Nature of P.R., Its Use and Disposal [R-3]

The primary examiner in the Technology Center (TC) from which the Patentability Report is requested, if he or she approves the request, will direct the preparation of the Patentability Report. This Patentability Report is **>in< memorandum form and will include the citation of all pertinent references and a complete action on all claims involved. The field of search covered should be endorsed on the file wrapper by the examiner making the report. For Image File Wrapper (IFW) processing, see IFW Manual. When an examiner to whom an application has been forwarded for a Patentability Report is of the opinion that final action is in order as to the referred claims, he or she should so state. The Patentability Report when signed by the primary examiner in the reporting TC will be returned to the TC to which the application is regularly assigned and placed in the file wrapper.

The examiner preparing the Patentability Report will be entitled to receive an explanation of the disclosure from the examiner to whom the case is assigned to avoid duplication of work.

If the primary examiner in a reporting TC is of the opinion that a Patentability Report is not in order, he or she should so advise the primary examiner in the forwarding TC.

I.    DISAGREEMENT AS TO CLASSIFICATION

Conflict of opinion as to classification may be referred to a **>classification dispute TC representative panel< for decision.

If the primary examiner in the TC having jurisdiction of the application agrees with the Patentability Report, he or she should incorporate the substance thereof in his or her action, which action will be complete as to all claims. The Patentability Report in such a case is not given a paper number but is allowed to remain in the file until the application is finally disposed of by allowance or abandonment, at which time it should be removed. For Image File Wrapper (IFW) processing, see IFW Manual.

II.    DISAGREEMENT ON PATENTABILITY REPORT

If the primary examiner does not agree with the Patentability Report or any portion thereof, he or she may consult with the primary examiner responsible for the report. If agreement as to the resulting action cannot be reached, the primary examiner having jurisdiction of the application need not rely on the Patentability Report but may make his or her own action on the referred claims, in which case the Patentability Report should be removed from the file.

III.    APPEAL TAKEN

When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, and the application is otherwise allowable, formal transfer of the application to said TC should be made for the purpose of appeal only. For Image File Wrapper (IFW) processing, see IFW Manual section 3.1. The receiving TC will take jurisdiction of the application and prepare the examiner's answer. At the time of allowance, the application may be sent to issue by said TC with its classification determined by the controlling claims remaining in the application.