MPEP 700
Examination of Applications
This is the Ninth Edition of the MPEP, Revision 07.2022, Last Revised in February 2023
Chapter 700: Examination of Applications
701: Statutory Authority for Examination
702: Requisites of the Application
702.01: Obviously Informal Cases
703: Reserved
704: Search and Requirements for Information
704.01: Search
704.02: Reserved
704.10: Requirements for Information
704.11: What Information May Be Required
704.11(a): Examples of Information Reasonably Required
704.11(b): When May a Requirement for Information Be Made
704.12: Replies to a Requirement for Information
704.12(a): Relationship of Requirement for Information to Duty of Disclosure
704.12(b): What Constitutes a Complete Reply
704.12(c): Treatment of an Incomplete Reply
704.13: Time Periods for Reply
704.14: Making a Requirement for Information
704.14(a): Format of the Requirement
704.14(b): Examiner’s Obligation Following Applicant’s Reply
704.14(c): Petitions to Requirements Under 37 CFR 1.105
704.14(d): Relationship to Information Disclosure Statements
705: Patentability Reports
705.01: Instructions re Patentability Reports
705.01(a): Nature of P.R., Its Use and Disposal
705.01(b): Sequence of Examination
705.01(c): Counting and Recording P.R.s
705.01(d): Reserved
705.01(e): Limitation as to Use
705.01(f): Interviews With Applicants
706: Rejection of Claims
706.01: Contrasted With Objections
706.02: Rejection on Prior Art
706.02(a): Reserved
706.02(a)(1): Reserved
706.02(a)(2): Reserved
706.02(b): Reserved
706.02(b)(1): Reserved
706.02(b)(2): Reserved
706.02(c): Reserved
706.02(c)(1): Reserved
706.02(c)(2): Reserved
706.02(d): Reserved
706.02(e): Reserved
706.02(f): Reserved
706.02(f)(1): Reserved
706.02(f)(2): Reserved
706.02(g): Reserved
706.02(h): Reserved
706.02(i): Reserved
706.02(j): Reserved
706.02(k): Reserved
706.02(l): Reserved
706.02(l)(1): Reserved
706.02(l)(2): Reserved
706.02(l)(3): Reserved
706.02(m): Reserved
706.02(n): Reserved
706.03: Rejections Not Based on Prior Art
706.03(a): Reserved
706.03(b): Reserved
706.03(c): Reserved
706.03(d): Reserved
706.03(e): Reserved
706.03(f): Reserved
706.03(k): Reserved
706.03(l): Reserved
706.03(o): Reserved
706.03(p): Reserved
706.03(s): Reserved
706.03(t): Reserved
706.03(u): Reserved
706.03(v): Reserved
706.03(w): Reserved
706.03(x): Reserved
706.03(y): Reserved
706.04: Rejection of Previously Allowed Claims
706.05: Rejection After Allowance of Application
706.06: Rejection of Claims Copied From Patent
706.07: Final Rejection
706.07(a): Final Rejection, When Proper on Second Action
706.07(b): Final Rejection, When Proper on First Action
706.07(c): Final Rejection, Premature
706.07(d): Final Rejection, Withdrawal of, Premature
706.07(e): Withdrawal of Final Rejection, General
706.07(f): Time for Reply to Final Rejection
706.07(g): Transitional After-Final Practice
706.07(h): Request for Continued Examination (RCE) Practice
707: Examiner’s Letter or Action
707.01: Primary Examiner Indicates Action for New Assistant
707.02: Applications Up for Third Action and 5-Year Applications
707.03: Reserved
707.05: Citation of References
707.05(a): Copies of Cited References
707.05(b): Citation of Related Art and Information by Applicants
707.05(c): Order of Listing
707.05(d): Reference Cited in Subsequent Actions
707.05(e): Data Used in Citing References
707.05(f): Non-Patent Documents Having a Lengthy Citation
707.05(g): Incorrect Citation of References
707.06: Citation of Decisions, Orders Memorandums, and Notices
707.07: Completeness and Clarity of Examiner’s Action
707.07(a): Complete Action on Formal Matters
707.07(b): Reserved
707.07(d): Language To Be Used in Rejecting Claims
707.07(e): Note All Outstanding Requirements
707.07(f): Answer All Material Traversed
707.07(g): Piecemeal Examination
707.07(h): Notify of Inaccuracies in Amendment
707.07(i): Each Claim To Be Mentioned in Each Office Action
707.07(j): State When Claims Are Allowable
707.07(k): Numbering Paragraphs
707.07(l): Comment on Examples
707.08: Reviewing and Initialing by Assistant Examiner
707.09: Signing by Primary or Other Authorized Examiner
707.10: Entry
707.11: Date
707.12: Mailing
707.13: Returned Office Action
708: Order of Examination
708.01: List of Special Cases
708.02: Petition To Make Special
708.02(a): Accelerated Examination
708.02(b): Prioritized Examination
708.02(c): Patent Prosecution Highway Program
708.03: Examiner Tenders Resignation
709: Suspension of Action
709.01: Overlapping Applications by Same Applicant or Owned by Same Assignee
710: Period for Reply
710.01: Statutory Period
710.01(a): Statutory Period, How Computed
710.02: Shortened Statutory Period and Time Limit Actions Computed
710.02(a): Reserved
710.02(b): Shortened Statutory Period: Situations in Which Used
710.02(c): Specified Time Limits: Situations in Which Used
710.02(d): Difference Between Shortened Statutory Periods for Reply and Specified Time Limits
710.02(e): Extension of Time
710.03: Reserved
710.04: Two Periods Running
710.04(a): Copying Patent Claims
710.05: Period Ending on Saturday, Sunday, or a Federal Holiday
710.06: Situations When Reply Period Is Reset or Restarted
711: Abandonment of Patent Application
711.01: Express or Formal Abandonment
711.02: Failure To Take Required Action During Statutory Period
711.02(a): Insufficiency of Reply
711.02(b): Special Situations Involving Abandonment
711.02(c): Termination of Proceedings
711.03: Reconsideration of Holding of Abandonment; Revival
711.03(a): Holding Based on Insufficiency of Reply
711.03(b): Holding Based on Failure To Reply Within Period
711.03(c): Petitions Relating to Abandonment
711.03(d): Examiner’s Statement on Petition To Set Aside Examiner’s Holding
711.04: Public Access to Abandoned Applications
711.04(a): Date of Abandonment
711.04(b): Ordering of Patented and Abandoned Files
711.04(c): Notifying Applicants of Abandonment
711.05: Letter of Abandonment Received After Application Is Allowed
711.06: Abstracts, Abbreviatures, and Defensive Publications
711.06(a): Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References
712: Reserved
713: Interviews
713.01: General Policy, How Conducted
713.02: Interviews Prior to First Official Action
713.03: Interview for "Sounding Out" Examiner Not Permitted
713.04: Substance of Interview Must Be Made of Record
713.05: Interviews Prohibited or Granted, Special Situations
713.06: No Inter Partes Questions Discussed Ex Parte
713.07: Exposure of Other Cases
713.08: Demonstration, Exhibits, Models
713.09: Interviews Between Final Rejection and Notice of Appeal
713.10: Interview Preceding Filing Amendment Under 37 CFR 1.312
714: Amendments, Applicant’s Action
714.01: Signatures to Amendments
714.01(a): Unsigned or Improperly Signed Amendment
714.01(b): Reserved
714.01(c): Signed by Attorney or Agent Not of Record
714.01(d): Amendment Signed by Applicant but Not by Attorney or Agent of Record
714.01(e): Amendments Before First Office Action
714.02: Must Be Fully Responsive
714.03: Amendments Not Fully Responsive, Action To Be Taken
714.03(a): Supplemental Amendment
714.04: Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty
714.05: Examiner Should Immediately Review
714.06: Reserved
714.07: Amendments Not in Permanent Ink
714.08: Reserved
714.10: Claims Added in Excess of Claims Previously Paid For
714.11: Amendment Filed During Interference Proceedings
714.12: Amendments and Other Replies After Final Rejection or Action
714.13: Amendments and Other Replies After Final Rejection or Action, Procedure Followed
714.14: Amendments After Allowance of All Claims
714.15: Amendment Received in Technology Center After Mailing of Notice of Allowance
714.16: Amendment After Notice of Allowance,
714.16(a): Amendments Under 37 CFR 1.312, Copied Patent Claims
714.16(b): Amendments Under 37 CFR 1.312 Filed With a Motion Under
714.16(c): Amendments Under 37 CFR 1.312, Additional Claims
714.16(d): Amendments Under 37 CFR 1.312, Handling
714.16(e): Amendments Under 37 CFR 1.312, Entry in Part
714.17: Amendment Filed After the Period for Reply Has Expired
714.18: Entry of Amendments
714.19: List of Amendments, Entry Denied
714.20: List of Amendments Entered in Part
714.21: Amendments Inadvertently Entered, No Legal Effect
714.22: Reserved
714.25: Discourtesy of Applicant or Attorney
715: Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a)
715.01: --
715.01(a): Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor
715.01(b): Reference and Application Have Common Assignee
715.01(c): Reference Is Publication of Inventor’s Own Invention
715.01(d): Activities Applied Against the Claims
715.02: How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims
715.03: Genus-Species, Practice Relative to Cases Where Predictability Is in Question
715.04: Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations
715.05: U.S. Patent or Application Publication Claiming Same Invention
715.06: Reserved
715.07: Facts and Documentary Evidence
715.07(a): Diligence
715.07(b): Interference Testimony Sometimes Used
715.07(c): Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country
715.07(d): Disposition of Exhibits
715.08: Decided by Primary Examiner
715.09: Timely Presentation
715.10: Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode
716: Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections
716.01: Generally Applicable Criteria
716.01(a): Objective Evidence of Nonobviousness
716.01(b): Nexus Requirement and Evidence of Nonobviousness
716.01(c): Probative Value of Objective Evidence
716.01(d): Weighing Objective Evidence
716.02: Allegations of Unexpected Results
716.02(a): Evidence Must Show Unexpected Results
716.02(b): Burden on Applicant
716.02(c): Weighing Evidence of Expected and Unexpected Results
716.02(d): Unexpected Results Commensurate in Scope With Claimed Invention
716.02(e): Comparison With Closest Prior Art
716.02(f): Advantages Disclosed or Inherent
716.02(g): Reserved
716.03: Commercial Success
716.03(a): Commercial Success Commensurate in Scope With Claimed Invention
716.03(b): Commercial Success Derived From Claimed Invention
716.04: Long-Felt Need and Failure of Others
716.05: Skepticism of Experts
716.06: Copying
716.07: Inoperability of References
716.08: Utility and Operability of Applicant’s Disclosure
716.09: Sufficiency of Disclosure
716.10: Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103
717: Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2)
717.01: Affidavit or Declaration Under 37 CFR 1.130
717.01(a): Declarations or Affidavits under 37 CFR 1.130(a) – Attribution
717.01(a)(1): Evaluation of Declarations or Affidavits under 37 CFR 1.130(a)
717.01(b): Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure
717.01(b)(1): Evaluation of Declarations or Affidavits under 37 CFR 1.130(b)
717.01(b)(2): Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated Prior Public Disclosure
717.01(c): Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations
717.01(d): U.S. Patent or Application Publication Claiming Same Invention
717.01(e): Passed Upon (or Decided by) by Primary Examiner
717.01(f): Seasonable (or Timely) Presentation
717.02: Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C)
717.02(a): Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C)
717.02(b): Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked
717.02(c): Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)
717.02(d): Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)
718: Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art,
719: File Wrapper
719.01: Papers in Image File Wrapper
719.02: Residence of Inventor Changed
719.03: Classification During Examination
719.04: Index of Claims
719.05: Field of Search
720: Public Use Proceedings
721: Reserved
724: Trade Secret, Proprietary, and Protective Order Materials
724.01: Completeness of the Patent File Wrapper
724.02: Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials
724.03: Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02
724.04: Office Treatment and Handling of Materials Submitted Under MPEP § 724.02
724.04(a): Materials Submitted in an Application Covered by
724.04(b): Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b)
724.04(c): Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d)
724.05: Petition To Expunge Information or Copy of Papers in Application File
724.06: Handling of Petitions To Expunge Information or Copy of Papers in Application File