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MPEP Summary Chapter 1700 Miscellaneous

This chapter discusses several miscellaneous topics such as the restrictions placed on former examiners aiding in the writing or prosecution of a patent application.

It also outlines the operation of the Official Gazette, including when it is published and the details of its contents.

Disclosure documents are also discussed. These provide a means for an inventor to establish evidence for the date of the conception of the invention before filing a patent application. The U.S.Philippines search engine is also touched upon briefly.

If anything from this chapter is on the patent bar exam at all, in all likelihood, it will pertain to disclosure documents and even less likely, the restrictions placed on former examiners.

 

1702 Restrictions on former examiners

§ 10.10 Restrictions on practice in patent cases.
(a) Only practitioners who are registered under § 10.6 or individuals given limited recognition under § 10.9 will be permitted to prosecute patent applications of others before the Office.
(b) No individual who has served in the patent examining corps of the Office may practice before the Office after termination of his or her service, unless he or she signs a written undertaking,
(1) Not to prosecute or aid in any manner in the prosecution of any patent application pending in any patent examining group during his or her period of service therein and
(2) Not to prepare or prosecute or to assist in any manner in the preparation or prosecution of any patent application of another (i) assigned to such group for examination and (ii) filed within two years after the date he or she left such group, without written authorization of the Director. Associated and related classes in other patent examining groups may be required to be included in the undertaking or designated classes may be excluded from the undertaking. When an application for registration is made after resignation from the Office, the applicant will not be registered if he or she has prepared or prosecuted or assisted in the preparation or prosecution of any patent application as indicated in the paragraph. Knowingly preparing or prosecuting or providing assistance in the preparation or prosecution of any patent application contrary to the provisions of this paragraph shall constitute misconduct under § 10.23(c)(13) of this part.
(c) A practitioner who is an employee of the Office cannot prosecute or aid in any manner in the prosecution of any patent application before the Office.
(d) Practice before the Office by Government employees is subject to any applicable conflict of interest laws, regulations or codes of professional responsibility.

employees of the PTO may not prepare, prosecute or even aid in the prosecution of any patent application during their employment and for an additional two years afterward
prosecution of any patent application before this 2 year period by a previous patent examiner must be cleared by the PTO

1703 The Official Gazette
The Official Gazette provides a weekly report of all the reexamination certificates, reissues, plant patents, utility patents, design patents, statutory invention registrations and other important information published that week.

the Official Gazette prints the following information for each patent it lists:
applicant's name
applicant's city and state of residence or Post Office address, if unassigned, or if assigned, the assignee's name, city and state of residence, and Post Office address
filing date
application number
patent number
title of the invention
number of claims
U.S. classification by class and subclass
a selected figure of the drawing, if any, except in the case of a plant patent
a claim or claims
any international classification
U.S. parent application data, if any
foreign priority application date, if any
for reissue patents: the original patent number and issue date, and the original application number and filing date

1706 Disclosure Documents
the PTO will accept and preserve "Disclosure Documents" for two years as evidence of the date of conception of an invention

"Disclosure Documents" should include:
a paper disclosing the invention with the inventor(s) signature
the document should be forwarded to the PTO by the inventor, owner of the invention or attorney or agent
it should include a clear explanation of the manner and process of the invention in enough detail for a person skilled in the art to be able to make and use the invention
the Disclosure Document will be kept on file for two years and then destroyed unless it is referred to in a separate letter in a related patent application filed within those two years

a Disclosure Document is not a patent application, the date of its receipt at the PTO will not become the filing date of any patent application disclosing the same material

Disclosure Documents:
will be kept in confidence
may be relied upon only as evidence of the conception of the invention
a patent application should be filed immediately if protection is desired
the two year period is not a "grace period", an inventor may lose all benefits by waiting

to establish priority of an invention, the inventor may have to establish diligence in completing the invention or in filing the patent application
if public use, sale or publication of the invention occurs more than one year prior to the filing of the patent application, it will still bar a patent from issuing regardless of the filing of a Disclosure Document

an overview of the Document Disclosure program:
it is a document that an inventor can submit with a separate cover sheet and paper describing the invention
the document will be retained for two years
the document can serve as proof of the conception of the invention
it is legally given no more weight other than proof of conception, it will not hold a filing date or protect the invention

1711 U.S. - Philippines search engine
This search engine was set up to facilitate the handling of applications with US. origin filed in the Philippines resulting in a savings in time and expense ofprosecution to US. applicants.

 

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