903.08(d) Transfer Procedure [R-08.2017]
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, either new or amended, does not belong in their art unit, they may request transfer of the application from their art unit (the "originating" art unit) to another art unit of a different TC (the "receiving" art unit).
The decision as to the classification resolution and assignment of an 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, they must complete the Application Transfer Request form in Patent File Wrapper (PFW) and provide a full explanation of the reasons for classification in the receiving art unit. At least one of the following should be included in the form in the space provided:
- (A) Identification of the controlling claim;
- (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, they classify and assign the application. The transfer is effected by accepting the application in PFW.
If the receiving SPE or primary examiner refuses to accept the application, the reasons for refusal must be entered in PFW. The refusal must be recorded in PFW. 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.
If an application has been assigned a class/subclass by the Office of Patent Application Processing (OPAP) and the application is routed to an art unit that does not examine applications assigned to that class/subclass, an IFW message to the "OIPEClass/GAUMismatch" IFW mailbox should be sent.