MPEP Section 903.08(d), Transfer Procedure
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.
903.08(d) Transfer Procedure [R-5]
I. TRANSFER BETWEEN ART UNITS WITHIN THE SAME TECHNOLOGY CENTER
Each Technology Center (TC) has developed internal procedures for transferring application between art units and resolving application assignment disputes.
II. TRANSFERS BETWEEN DIFFERENT TECHNOLOGY CENTERS
Where a supervisory patent examiner (SPE) believes an application (including PCT applications), either new or amended, does not belong in his or her art unit, he or she may request transfer of the application from his or her art unit (the "originating" art unit) to another art unit of a different TC (the "receiving" art unit).
Where the application is a PCT application or an application that has been docketed to an examiner, the decision as to the classification resolution and assignment of the application is made by agreement between the SPEs involved in the transfer.
Where the application is an application (other than a PCT application) that has not been docketed to an examiner, the decision as to the classification resolution and assignment of the application is made by agreement between the SPEs involved in the transfer. If no agreement can be reached between the SPEs, the application may be forwarded to the classification dispute **>TC< representative panel of the TC where the application was originally assigned for a final decision. The classification dispute TC representative panel consists of designated representatives from each TC.
Before an application is sent to a receiving art unit of a different TC, the application must be fully reviewed to ensure that all appropriate areas in the originating TC have been considered with respect to the classification of the application. In all cases when a transfer is initiated, the application must be sent on transfer inquiry to a receiving art unit. Even if the application is confusing or contains unfamiliar subject matter, the SPE of the originating art unit must make his or her best judgment as to where the application should be classified and attempt to transfer it there.
Where an application's claims include a combination of limitations for plural disciplines (chemical, electrical, or mechanical), an SPE or primary examiner may request transfer to another discipline, notwithstanding the fact that the controlling claims are properly classified in his or her art unit, on the ground that the application is "best examinable" in the other discipline. In this instance, the SPE or primary examiner requesting transfer should cite art showing the limitations classifiable in his or her discipline. For discussion of the situations in which assignment of an application on a "best examinable" basis may be proper, see MPEP § 903.08(e).
III. PROCESS FOR TRANSFER
When the SPE or primary examiner of the originating art unit determines that a transfer is appropriate, he or she must complete the Application Transfer Request form in PALM EXPO and provide a full explanation of the reasons for classification in the receiving art unit. >An eDAN message should also be sent notifying the receiving art unit of the transfer.< At least one of the following should be included in the form in the space provided:
(A) Identification of the controlling claim examinable in another TC;
(B) Identification of any existing informal transfer agreement; or
(C) Other reasons - with full explanation.
>If the SPE or examiner of the originating art unit believes an application has been improperly assigned to their art unit, but is unable to determine an appropriate place to send the application, a "gatekeeper" or search assistant should be consulted. A listing of examiners who function in this role may be found at http://ptoweb/patents/tsa/. It is noted that "gatekeepers" or search assistants exist in all of the TCs except the TC that examines design applications (TC 2900).<
If the receiving SPE or primary examiner agrees to accept the application, he or she classifies and assigns the application. The transfer is effected by accepting the application in PALM EXPO.
If the receiving SPE or primary examiner refuses to accept the application, the reasons for refusal must be entered in PALM EXPO. For an image file wrapper (IFW) application, an eDAN message stating that the application is being returned should be sent to the originally assigned art unit. The refusal must be recorded in the PALM EXPO transfer inquiry page. Where the application is an application (other than a PCT application) that has not been docketed to an examiner, the originating art unit may then either accept the application for examination or send the disputed transfer application to the classification dispute TC representative panel for final resolution. The panel considers the statements and evidence of both the originating and receiving art units and assigns the application to the art unit that has jurisdiction over the art in which the controlling claims of the application are properly classified.
Under certain circumstances, the classification dispute TC representative panel, contrary to controlling classification rules, may assign an application to a class or art unit which the panel *>deems< is better equipped to examine the application. See MPEP § 903.08(e).
Every application, no matter how peculiar or confusing, must be assigned somewhere for examination. Thus, in contesting the assignment of an application, the SPE or primary examiner should **>indicate< another class that is ** a better *>class in which< to classify the application, rather than simply arguing that the application does not fit the examiner's class.
If an application contains both classification issues and issues unrelated to classification, e.g., a dispute both as to the classification of claims and the propriety of restriction, the issues unrelated to classification should be resolved first. If>,< thereafter>,< classification issues still need to be addressed, application transfer may be appropriate. For the procedure in the classification groups for applications which contain examining corps issues, see MPEP § 903.08(e).
The question of need for a restriction requirement does not influence the determination of transfer.
Applications filed under the Patent Cooperation Treaty and such other special applications designated by competent authority must be hand-carried throughout the transfer process unless an established practice is in place for expediting the delivery of these applications. If an application is hand-carried at any stage of the transfer process, care must be taken to update the location of the application on the PALM system each time the application is moved.
>If an application has been assigned a class/subclass by the Office of Initial Patent Examination (OIPE) and the application is routed to an art unit that does not examine applications assigned to that class/subclass, an eDAN message to "OIPEClass/GAUMismatch" IFW mailbox should be sent.<