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| | <noinclude>{{MPEP Section|706|700|708}}</noinclude> |
| ==702 Requisites of the Application== | | ==702 Requisites of the Application== |
| | <noinclude>__TOC__</noinclude> |
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| When a new application is assigned in the Technology
| | Upon receipt of a new patent application, the examiner will make sure that it meets all requirements. If not, the applicant may amend the application, but may not add new matter. |
| Center, the examiner should review the contents
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| of the application to determine if the application
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| meets the requirements of 35 U.S.C. 111(a). Any matters
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| affecting the filing date or abandonment of the
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| application, such as lack of an oath or declaration, filing
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| fee, or claims should be checked . For Image
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| File Wrapper (IFW) processing, see IFW Manual sections
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| 3.1 and 3.3.
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| The examiner should be careful to see that the
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| application meets all the requisites set forth in MPEP
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| Chapter 600 both as to formal matters and as to the
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| completeness and clarity of the disclosure. If all of the
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| requisites are not met, applicant may be called upon
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| for necessary amendments. Such amendments, however,
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| must not include new matter.
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| ===702.01 Obviously Informal Cases=== | | ===702.01 Obviously Informal Cases=== |
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| When an application is reached for its first Office
| | For an application that does has an incomplete or informal disclosure, the following procedure may be followed: |
| action and it is then discovered to be impractical to
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| give a complete action on the merits because of an
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| informal or insufficient disclosure, the following procedure | |
| may be followed: | |
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| (A)A reasonable search should be made of the
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| invention so far as it can be understood from the disclosure,
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| objects of invention and claims and any
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| apparently pertinent art cited. In the rare case in which
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| the disclosure is so incomprehensible as to preclude a
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| reasonable search, the Office action should clearly
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| inform applicant that no search was made;
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| (B)Informalities noted by the Office of Initial
| | * A reasonable search should be made of the |
| Patent Examination (OIPE) and deficiencies in the
| | invention so far as it can be understood from the application unless the application; |
| drawing should be pointed out by means of attachments
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| to the Office action (see MPEP § 707.07(a));
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| (C)A requirement should be made that the specification
| | * The applicant will be required to revise the specification; and |
| be revised to conform to idiomatic English
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| and United States patent practice; | |
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| (D)The claims should be rejected as failing to
| | * The claims should be rejected. |
| define the invention in the manner required by
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| 35 U.S.C. 112 if they are informal. A blanket rejection
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| is usually sufficient.
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| The examiner should attempt to point out the points | | The examiner should attempt to point out the points |
| of informality in the specification and claims. The | | of informality in the specification and claims and the applicant has the burden of revising the application. |
| burden is on the applicant to revise the application to
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| render it in proper form for a complete examination.
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| If a number of obviously informal claims are filed
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| in an application, such claims should be treated as
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| being a single claim for fee and examination purposes.
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| It is obviously to applicant’s advantage to file the
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| application with an adequate disclosure and with
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| claims which conform to the U.S. Patent and Trademark
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| Office usages and requirements. This should be
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| done whenever possible. If, however, due to the pressure
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| of a Convention deadline or other reasons, this is
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| not possible, applicants are urged to submit promptly,
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| preferably within 3 months after filing, a preliminary
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| amendment which corrects the obvious informalities.
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| The informalities should be corrected to the extent
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| that the disclosure is readily understood and the
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| claims to be initially examined are in proper form,
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| particularly as to dependency, and otherwise clearly
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| define the invention. “New matter” must be excluded
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| from these amendments since preliminary amendments
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| filed after the filing date of the application
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| do not enjoy original disclosure status. See MPEP
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| § 608.04(b).
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| Whenever, upon examination, it is found that the
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| terms or phrases or modes of characterization used to
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| describe the invention are not sufficiently consonant
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| with the art to
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| which the invention pertains, or with
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| which it is most nearly connected, to enable the examiner
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| to make the examination specified in 37 CFR
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| 1.104, the examiner should make a reasonable search
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| of the invention so far as it can be understood from
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| the disclosure. The action of the examiner may be
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| limited to a citation of what appears to be the most
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| pertinent prior art found and a request that applicant
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| correlate the terminology of the specification with art-
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| accepted terminology before further action is made.
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| Use form paragraph 7.01 where the terminology is
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| such that a proper search cannot be made.
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| Use form paragraph 7.02 where the application is
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| so incomprehensible that a reasonable search cannot
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| be made.
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| For the procedure to be followed when only the
| | Patent applicants should submit applications that conform to USPTO requirements. If this is not possible, they should file a prelimiary amendment to correct the informalities. |
| drawing is informal, see MPEP § 608.02(a) and
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| § 608.02(b).
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