MPEP Section 720.05, Final Decision

Executive summary:

This document contains Section 720.05 ("Final Decision") 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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720.05 Final Decision [R-2]

The final decision of the examiner should be "analogous to that rendered by the [Board of Patent Appeals and Interferences] in an interference proceeding, analyzing the testimony" and stating conclusions. In re Townsend, 1913 C.D. 55, 188 O.G. 513 (Comm'r Pat. 1913). In reaching his or her decision, the examiner is not bound by the prior finding that a prima facie case has been established.

If the examiner concludes that a public use or sale bar exists, he or she will enter a rejection to that effect in the application file, predicating that rejection on the evidence considered and the findings and decision reached in the public use proceeding. Even if a rejection is not made, the examiner's written action should reflect that the evidence of 35 U.S.C. 102(b) activity has in fact been considered. Likewise, if the examiner concludes that a prima facie case (A) has not been established, or (B) has been established and rebutted ( MPEP § 2133.03(e) et seq.) then the examiner's written action should so indicate. Strict adherence to this format should cause the rationale employed by the examiner in the written action to be self-evident. In this regard, the use of reasons for allowance pursuant to 37 CFR 1.104(e) may also be appropriate. See MPEP § 1302.14. In ex parte cases where the petitioner does not have access to the file, no copy of the examiner's action is mailed to the petitioner by the Office.

There is no review from the final decision of the examiner in the public use proceedings. A petition under 37 CFR 1.181, requesting that the *>Director of the USPTO< exercise his or her supervisory authority and vacate the examiner's decision, will not be entertained except where there is a showing of clear error. See Ex parte Hartley, 1908 C.D. 224, 136 O.G. 1767 (Comm'r Pat. 1908). Once the application returns to its ex parte status, appellate review under 35 U.S.C. 134 and 141- 145 may be had of any adverse decision rejecting claim(s), as a result of the examiner's decisions as to public use or sale.