MPEP 719

719 File Wrapper

The folder in which the U.S. Patent and Trademark Office maintains the application papers is referred to as a file wrapper.

719.01Papers in File Wrapper

Papers that do not become a permanent part of the record should not be entered on the “Contents” of the file wrapper. All papers legally entered on the “Contents” of the file wrapper are given a paper number. No paper legally entered on the “Contents” should ever be withdrawn or expunged from the application file, especially a part of the original disclosure of the application, without special authority of the Director. However, 37 CFR 1.59 provides that certain documents may be expunged if they were unintentionally submitted or contain proprietary information which has not been made public and is not important to a decision of patentability. See MPEP § 724. Certain oaths executed abroad may be returned but a copy is retained in the file. See MPEP § 604.04(a). For Image File Wrapper (IFW) processing, see IFW Manual sections 3.3 and 3.4.

Form paragraph 7.214 may be used to notify applicant that papers in an application that has received a filing date ordinarily will not be returned.

719.01(a) Arrangement of Papers in FileWrapper

Until revision for allowance, the specification, amendments and all other communications from applicant are fastened to the left side (center fold) of the file wrapper. They are in inverse chronological order, that is, the communication with the latest Mail Center “Office Date” is on top. A similar arrangement is followed on the right side, where Office actions and other communications from the Office are fastened, except that the drawing print is always kept on top for the convenience of the examiner.

Where amendments are submitted in duplicate, the copy is destroyed except where the duplicate is received within the time period for reply and the original is late. In this latter situation both copies are placed in the file. The “original” is entered with reference made to the copy.

At allowance, only those papers required by the printer are placed in the left side (center section) of the file wrapper. For Image File Wrapper (IFW) processing, see IFW Manual sections 3.3 and 3.4.

719.01(b) Prints

The prints of the drawing are fastened inside the file wrapper by the Office of Initial Patent Examination.

The white paper prints are always kept on top of the papers on the right of the file wrapper. For Image File Wrapper (IFW) processing, see IFW Manual sections 3.3.

All prints and inked sketches subsequently filed to be part of the record should be endorsed with the application number of the corresponding application. Note MPEP § 608.02(m).

719.02 Data Entered on File Wrapper

It is sometimes necessary to make corrections to the data on the file wrapper label or, for 09/series applications, the PALM bib-data sheet placed in the file wrapper.

If the examiner notices an error in any of the data originally entered on the file wrapper or on the PALM bib-data sheet, he or she should:

- for 08/ or earlier series applications: make the correction in red ink on the file wrapper and forward the application to the TC technical support staff for correction of the PALM database;

- for 09/series applications: make the correction in red ink on the PALM bib-data sheet and forward the application to the TC technical support staff for correction of the PALM database and printing of a new PALM bib-data sheet for placement in the file wrapper;

- for 10/ and above series applications: make the correction in red ink on the file wrapper and forward the application to the TC technical support staff for correction of the PALM database and printing of a new adhesive file wrapper label to be placed on the file wrapper.

Instances where correction is necessary include:

(A)Correction of inventorship such as changes in the order of the names or a change in the name of an inventor, granted by petition, and additions or deletions of inventors under 37 CFR 1.48. See MPEP § 605.04(g).

(B)Correction of the filing date.

(C)Correction concerning prior U.S. applications which have application number errors. See MPEP § 202.02.

(D)Correction of a claim for benefit under 35 U.S.C. 120, 121, or 365(c). See MPEP § 201.11and § 1302.09.

If an error is noticed in the name or address of the assignee, it should be corrected by the Assignment Division.

See also MPEP § 707.10 and § 719.01.

For Image File Wrapper (IFW) processing, see IFW Manual sections 3.3 and 3.7.

719.02(b) Name or Residence of Inventoror Title Changed

The distinction between “residence” and mailing address should not be lost sight of. See MPEP § 605.02 and § 605.03.

MPEP § 605.04(c) explains the procedure to be followed when applicant changes name.

Unless specifically requested by applicant, the residence will not be changed on the file. For example, if a new oath gives a different residence from the original, the file will not be changed.

For a patent application publication to be published with a new residence, the information must be entered into the Office electronic records at least nine weeks before the publication date of the application. For a patent to issue with the new residence, applicants are strongly encouraged to file an Application Data Sheet (37 CFR 1.76) showing the new residence information. Patents are printed from the documents in the application file and the data shown in the Office electronic records, other than the images of the papers in the file, are not necessarily relied upon.

719.03 Classification During Examination

When a new application is received in a Technology Center, the classification of the application and the initials or name of the examiner who will examine it or other assigned docket designation are noted in the application file. See Also MPEP § 903.08(b).

719.04 Index of Claims

Constant reference is made to the “Index of Claims” found in the inside of the file wrapper of all applications maintained in paper. It should be kept up to date so as to be a reliable index of all claims standing in an application, and of the amendment in which the claims are to be found.

The preprinted series of claim num- bers appearing on the file wrapper refer to the claim numbers as originally filed while the adjacent column should be used for the entry of the final numbering of the allowed claims.

Independent claims should be designated in the Index of Claims by encircling the claim number in red ink.

A line in red ink should be drawn below the number corresponding to the number of claims originally presented.

Thereafter, a line in red ink should be drawn below the number corresponding to the highest numbered claim added by each amendment. Just outside the Index of Claims form opposite the number corresponding to the first claim of each amendment there should be placed the letter designating the amendment.

If the claims are amended in rewritten form under 37 CFR 1.121(c), the original claim number should not be stricken from the Index of Claims but a notation should be made in red ink in the margin to the left of the original claim number, i.e., “Amend. 1”; if the claim is rewritten a second time, “Amend. 1” should be changed by striking out “1” and inserting “2” above it.

As any claim is canceled, a line in red ink should be drawn through its number.

A space is provided for completion by the examiner to indicate the date and type of each Office action together with the resulting status of each claim. A list of codes for identifying each type of Office action appears below the Index. At the time of allowance, the examiner places the final patent claim numbers in the column marked “Final.” For Image File Wrapper (IFW) processing, see IFW Manual.

719.05 Field of Search

In the first action on the merits of an application, the examiner must record in the appropriate sections of the OACS “Search Notes” page the areas in which the search for prior art was made. The examiner must also indicate the date(s) on which the search was conducted and provide his/her initials. In subsequent actions, where the search is brought up to date and/or where a further search is made, the examiner must indicate that the search has been updated and/or identify the additional field of search and include the date and the examiner’s initials in the appropriate sections of the OACS “Search Notes” page. Any search updates should include the appropriate databases and the search queries and classifications employed in the original search. See MPEP § 904. Great care should be taken so as to clearly indicate the places searched and the date(s) on which the search was conducted and/or updated.

In order to provide a complete, accurate, and uniform record of what has been searched and considered by the examiner for each application, the U.S. Patent and Trademark Office has established procedures for recording search data in the application file. Such a record is of importance to anyone evaluating the strength and validity of a patent, particularly if the patent is involved in litigation.

Under the procedures, searches are separated into two categories and listed, as appropriate, in either the “SEARCHED” box or “SEARCH NOTES” box of the OACS “Search Notes” page. For Image File Wrapper (IFW) processing, see IFW Manual section 3.7.

I.“SEARCHED” BOX ENTRIES

The following searches will be recorded in the “SEARCHED” box section of the OACS “Search Notes” page by the examiner along with the date and the examiner’s initials, according to the following guidelines:

(A)A classification search. A classification search is defined as a complete search of all the documents in a particular subclass, whether filed by U.S. or IPC classification and it is not limited by any text query or other means. If a classification search was performed, the class and subclass must be recorded in the “SEARCHED” box section of the OACS “Search Notes” page along with the date that the search was performed (or updated) and the examiner’s initials. Unless a classification search as defined was performed, it would be improper to merely record the class and subclass in the “SEARCHED” box without any indication that a limited classification search was performed.

Examples

424/270, 272, 273

224/42.1 F

414/DIG. 4

D3/32 R

A61K 9/22

A61K 31/56

(B)When a classification search made in a parent application is updated during the examination of a continuing application, those searches updated, followed by “(updated from parent S.N. ............)” will be recorded. If the parent application has been patented, the patent number “Pat. N. ............” instead of application number in the above phrase will be recorded. The examiner should recopy the entire search updated from the parent on the file of the continuing application to the extent pertinent to the continuing application.

Examples

273/29 BC (updated from

343/114.5 parent S.N. 08/495,123)

116/DIG.47 (updated from

D7/73, 74 parent Pat. N. 4,998,999)

For IFW processing, see IFW Manual section 3.7.

II. “SEARCH NOTES” BOX ENTRIES

Entries made in the “SEARCH NOTES” box are of equal importance to those placed in the “SEARCHED” box. They are intended to complete the application file record of areas and/or documents considered by the examiner in his or her search. The examiner will record the following searches in this box and in the manner indicated, with each search dated and initialled:

(A)A limited classification search. A limited classification search is defined as a search of a patent document classification database limited by a text query or a set of text queries or other means. If a limited classification search was performed, the class and subclass followed by an appropriate annotation must be recorded in the “SEARCH NOTES” box section of the OACS “Search Notes” page along with the date that the search was performed (or updated) and the examiner’s initials.

Examples

414/1 (U.S. only)

238/6 (1954 to date)

250/13 (cursory)

705/14 (text search only – see search history printout)

4C083 AC10 (F-term, abstract only)

A61B 5/00N4P (ECLA, text search of full doc – see search history printout)

G06F1/2 (text search only – see search history printout)

(B)Text search only was performed in a particular database (no classification or limited classification search was performed). If a text search was performed in a particular database and no classification or limited classification search was performed, the following entry must be recorded in the “SEARCH NOTES” box section of the OACS “Search Notes” page: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. A copy of the search history printout must be included in the application file.

An on-line computerized literature searching service which uses key terms and index terms to locate relevant publications in many large bibliographic databases is available in the Scientific and Technical Information Center (STIC). Members of the STIC staff are assigned to assist examiners in selecting key terms and to conduct a search. A complete search history in the form of a printout must be included in the application file. The following entry must be recorded in the “SEARCH NOTES” box section of the OACS “Search Notes” page: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials.

(C)A consultation with other examiners to determine if relevant search fields exist in their areas of expertise.

If the subclass is not searched, record the class and subclass discussed, followed by “(consulted).” This entry may also include the name of the examiner consulted and the art unit.

Examples

24/ fasteners (consulted)

24/ fasteners (consulted J. Doe A.U. 3501)

24/201 R-230 AV (consulted)

(D)A search of a publication in paper formlocated through a manual search (non-electronic search), e.g., a library search, a text book search, a Chemical Abstracts search, etc. Record according to the following for each type of literature search:

(1)Abstracting publications, such as Chemical Abstracts, record name of publications, list terms consulted in index, and indicate period covered.

Examples

Chem. Abs, Palladium hydride Jan.-June 1975

Eng. Index, Data Conversion Analog to Digital 1975

(2)Periodicals — list by title, volume, issue, pages and date, as appropriate.

Examples

Popular Mechanics, June-Dec. 1974

Lubrication Engineering, vols. 20-24

(3)Books — list by title, author, edition or date, pages, as appropriate.

Example

Introduction to Hydraulic Fluids, Roger E. Hatton, 1962

(4)Other types of literature not specifically mentioned herein (i.e., catalogs, manufacturer’s literature, private collections, etc.).

Record data as necessary to provide unique identification of material searched.

Example

Sears Roebuck catalog, Spring-Summer, 1973.

A cursory or browsing search through a number of materials that are not found to be of significant relevance may be indicated in a collective manner, e.g., “Browsed STIC shelves under QA 76.5” or “Browsed text books in STIC relating to......................” More detailed reviews or searches through books and periodicals or any search of terms in abstracting publications should be specifically recorded, however.

(E)A review of art cited in a parent applicationor an original patent, as required for all continuation and continuation-in-part applications, divisional applications, reissue applications and reexamination proceedings, or a review of art cited in related applications.

Record the application number of a parent application that is still pending or abandoned, followed by “refs. checked” or “refs. ck’ed.” If for any reason not all of the references have been checked because they are not available or clearly not relevant, such exceptions should be noted.

Examples

S. N. 495,123 refs. checked

S. N. 490,000 refs. checked

S. N. 480,111 refs. checked except for Greek patent to Kam

S. N.410,113 refs. not checked since the file was not available

Record the patent number of a parent or related application that is now patented or of an original patent now being reissued with “refs. checked” or “refs. ck’ed.”

Examples

Pat. 3,900,000 refs. checked

Pat. 3,911,111 refs. ck’ed

A.Search History Printouts

Any time that an electronic search was performed (i.e., limited classification search, or text search), examiners must include a complete search history in the form of a printout to be placed in the application file (scanned into IFW). The printout must include the following minimum information:

(1)all the search logic or chemical structure or sequence(s) used as a database query;

(2)all the name(s) of the file(s) searched and the database service;

(3)the date the search was made or updated; and

(4)the examiner’s initials.

It would be improper to merely list the tool/database, e.g., “EAST” or identify the search queries in the “SEARCH NOTES” box section of the OACS “Search Notes” page. A search history printout should be devoid of result printouts to limit the “bulk search printouts.”

Regarding nucleotide and peptide sequence searches, these searches are stored in SCORE (The Supplemental Complex Repository for Examiners), which is part of the permanent file wrapper and satisfies all National Archives Electronic Records Management requirements. The following entry should be recorded in the “SEARCH NOTES” box section of the OACS “Search Notes” page: “See sequence search results in SCORE” along with the date the search was performed and the examiner’s initials.

Most of the database services accessed in application searches provide a command to display or print the search history which includes most, if not all, of the minimum required information for documenting database searches. Table 1 below lists the history command for each database service and which of the required minimum documentation elements are missing when the history command is entered. The missing elements may be documented by writing them on the printout of the search history or by supplying further portions of the search transcript which do include the missing elements. In some instances, depending on the database service, the log off command will supply the missing data element. For example, this is the case with searches in STN and Questel-Orbit; the name of the database service is not provided by entering the history command and must be supplied by the inclusion of the log off command. Another example is with WEST. Neither the Freeform Search page nor the Show S Numbers page prints the date of the search, therefore, the date of the WEST search must be documented in writing. For IFW processing, see IFW Manual section 3.7.

If there are several search statements in the history, 

the statement or statements of which the results were reviewed should be indicated by circling them in BLACK INK.

B.Explanation of Table Terminology

History Command - Generally, a display of what the user has asked the search software to do. Will display the search logic entered by the user. Some histories are limited to display of the searches done only in the current file while others deliver a complete record of what file or files were accessed and all searches done since sign on. Dialog, Questel-Orbit, and LexisNexisTM are services limited to display of the searches done only in the current file.

Name of Database Service - Most services do not display this information as part of the search transcript. None of the services in the table, except WEST, list that information as part of the history command. However, Questel-Orbit, and STN supply the name of the database service during log off.

Search Logic - Generally, a display of the search commands executed by the search software. For a structure or sequence search, this can be a printout of the structure or sequence used to query the system.

Name of File Searched - This is the name of the collection of data accessed. In some services, the file name is only displayed when the file is selected and not in response to the history display command; Dialog and Questel-Orbit are two such services. For example, Dialog supplies only the file number with the log off command. The file number alone is not adequate documentation of a search. The name of the file is required.

Date of Search - WEST, Dialog, and Questel-Orbit do not display the date of search as part of the history command. Dialog and Questel-Orbit supply the date of search during log off; the date of search for WEST must be written on the search report.

C.Other Databases

For other types of publicly accessible computer accessed databases (e.g., CD-ROM databases, specialized databases, etc.), record data as necessary to provide unique identification of material searched and sufficient information as to the search query or request so that the search can be updated. The record should also document the location of the database and its form (CD-ROM, etc.).

Example: Citing a biotech CD-ROM database

Entrez: Sequences, National Center for Biotechnology Information, Version 7.19.91b (CD-ROM, TC 1600) Searched HIV and vaccine; neighbored Galloway article dated 6/5/91 on April 1, 1990.

Example: Citing a nonbiotech CD-ROM database

Computer Select, (November, 1991), Ziff Davis Communications Co., (CD-ROM, STIC), Searched Unix and emulation on December 1, 1991.

III.INFORMATION NOT RECORDED IN THE APPLICATION FILE

For an indication of consideration or nonconsideration of prior art citations submitted by applicant in Information Disclosure Statements (37 CFR 1.97 and 1.98), see MPEP § 609 et seq.

Form PTO 1590. Search Request FormForm PTO 1590. Search Request Form

Search Notes FormSearch Notes Form

719.06 Foreign Filing Dates

See MPEP § 201.14(c), § 202.03 and § 201.14(d).

719.07 Related Applications

The file wrapper or the PALM bib-data sheet (for 09/series applications) should identify earlier filed related applications (e.g., the applications that are relied upon for benefit under 35 U.S.C. 120).

See MPEP § 202.02 and § 202.03.

If the application is maintained in the Image File Wrapper (IFW), a bib-data sheet should be printed and the examiner should verify the information on the sheet (e.g., the continuity data and foreign priority information, writing for example, “none,” if there is no such data), and submit the copy of the initialed bib-data sheet for scanning.