TMEP 710.02: Search for Evidence Indicating No Refusal or Requirement Necessary

This is the October 2015 Edition of the TMEP

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710.02    Search for Evidence Indicating No Refusal or Requirement Necessary

USPTO practice is to indicate the results of a search for evidence when the examining attorney considers an issue and determines that no action will be taken on it. This information is helpful for internal review. A Note to the File should be entered in the record to reflect that a search for evidence was conducted in any case in which the examining attorney determines that a search would be useful for review of the application, but that no further action is required.

The examining attorney should simply note the parameters of the search conducted without stating any opinions or conclusions.

For instance, in the case of a search of telephone directories for surnames, the record should indicate only the directories investigated and the number of occurrences of the surname. Or, in the case of a search for the meaning of a term, the record should show the sources checked and whether the term was found.

The Note to the File should not provide any of the examining attorney's analysis, opinions, or conclusions regarding the evidence when the examining attorney determines that a refusal or requirement is not appropriate. Nor should the examining attorney place in the record copies of e-mail messages or other communications between the examining attorney and other USPTO personnel concerning the application. And the examining attorney should not refer to, or place copies of, any registration or pending application that was considered in a §2(d) search, unless the examining attorney determines that there is a conflict and issues an Office action based on the application or registration.