MPEP § 702 — MPEP § 702
Current through: 2022-07-01

702-Requisites of the Application 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0700 

 Section 702 
 

 
 
 
 
 
 702 Requisites of the Application [R-07.2015]

 The Office of Patent Application Processing (OPAP) reviews application
 papers to determine whether a new application is entitled to a filing date. Note that as a
 result of the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211,
 December 18, 2012, and specifically, the amendments to the patent laws to implement the
 provisions of the Patent Law Treaty (PLT) in title II of the PLTIA, the filing date
 requirements for applications filed on or after December 18, 2013 are different from the
 filing date requirements for applications filed prior to December 18, 2013. Except for
 design applications, the filing date for nonprovisional applications filed on or after
 December 18, 2013 is the date on which a specification, with or without claims, is received
 in the Office. See MPEP §
 601.01(a) for additional information. Similarly, provisional
 applications filed on or after December 18, 2013 may receive a filing date even if the
 application is filed without drawings. See MPEP § 601.01(b) for additional
 information. The filing date for a design application, except for a continued prosecution
 application (CPA) under 37 CFR 1.53(d) , is the date on which
 the specification as required by 35 U.S.C. 112 , including at least one
 claim, and any required drawings are received in the Office. See MPEP § 601.01(a) . Also,
 for applications filed on or after December 18, 2013, an application (other than an
 application for a design patent) is not required to include any drawings to be entitled to
 a filing date. It should be noted, however, 35 U.S.C. 111(a)(2) continues to
 require the application to include a drawing as prescribed by 35 U.S.C. 113 , which
 requires a drawing where necessary for the understanding of the subject matter sought to be
 patented. Therefore, any drawings necessary for the understanding of the invention should
 be submitted with the application on filing.
 

 If the subject matter of the application admits of illustration by a
 drawing to facilitate understanding of the invention, including where a drawing is
 necessary for the understanding of the invention, the Office will continue the practice of
 requiring a drawing. See MPEP
 § 608.02 , subsection IV. As discussed in MPEP § 608.02 , this
 requirement prior to examination should continue to be extremely rare and limited to the
 situation in which no examination can be performed due to the lack of an illustration of
 the invention.
 

 In addition, as provided in 35 U.S.C.
 111(c) , a nonprovisional application filed under 35 U.S.C.
 111(a) on or after December 18, 2013 may be filed by a reference to a
 previously filed application (foreign, international, provisional, or nonprovisional)
 indicating that the specification and any drawings of the application are replaced by the
 reference to the previously filed application. See MPEP § 601.01(a) , subsection III.
 

 The minimal formal requirements resulting from the
 implementation of the PLTIA and PLT should not be viewed as prescribing a best practice for
 the preparation and filing of a patent application. The preparation of claims to any
 claimed invention for which patent protection is desired and the inclusion of such claims
 with the application on filing will help ensure that the application satisfies the
 disclosure requirements of 35 U.S.C. 112(a) for any such claimed
 invention. Similarly, while the absence of any drawing on the filing of an application no
 longer raises a question as to whether the application is entitled to a filing date, the
 preparation of drawings for a provisional or nonprovisional application is prudent where a
 drawing is necessary for the understanding of the subject matter sought to be patented, and
 inclusion of such drawing(s) with the application on filing will help ensure that the
 requirements of 35 U.S.C.
 113 are satisfied for any such claimed invention.
 

 If an application (other than an application for a design
 patent) is filed on or after December 18, 2013, without any claims, OPAP will issue a
 notice giving the applicant a time period within which to submit at least one claim in
 order to avoid abandonment. An application will not be placed on an examiner’s docket
 unless and until the application includes a specification including at least one claim.
 

 For applications filed under pre-PLT (AIA) 35 U.S.C.
 111 prior to December 18, 2013, a filing date is assigned to a
 nonprovisional application as of the date a specification containing a description and
 claim and any necessary drawings are filed in the U.S. Patent and Trademark Office
 (Office). See pre-PLT
 (AIA) 37 CFR 1.53(b) .
 

 Once OPAP determines that the application is entitled to a
 filing date, OPAP then determines whether the application as filed is complete, e.g.,
 includes the required fees, the inventor’s oath or declaration, and all pages of the
 specification and drawings. If the papers filed are not entitled to a filing date, OPAP
 will send a “Notice of Incomplete Application” informing applicant of the deficiencies; if
 the application is entitled to a filing date but it is not complete, an OPAP notice (e.g.,
 a “Notice of Omitted Item(s)”) will be sent indicating that the application papers so
 deposited have been accorded a filing date and indicating what papers must be filed to
 complete the application.
 

 The examiner should be careful to see that the application is
 complete when taken up for examination. If, for example, pages of the specification or
 drawings are missing, the examiner should determine whether the application is entitled to
 the filing date assigned, and what action should be taken. See MPEP §§ 601.01(d) and
 601.01(g) for guidance.
 

 
 702.01 Obviously Informal Cases [R-07.2015]

 When an application is taken up for examination and it is then
 discovered to be impractical to give a complete action on the merits because of an
 informal or insufficient disclosure, the following procedure may be followed:
 

 
 (A) A reasonable search should be made of the invention so far as it
 can be understood from the disclosure, objects of invention and claims and any
 apparently pertinent art cited. In the rare case in which the disclosure is so
 incomprehensible as to preclude a reasonable search, the Office action should
 clearly inform applicant that no search was made;
 

 (B) Any form that lists informalities and any additional formal
 requirements to be made should be included in the first Office action (see
 MPEP §
 707.07(a) );
 

 (C) A requirement should be made that the specification be revised to
 conform to idiomatic English and United States patent practice;
 

 (D) The claims should be rejected as failing to define the invention
 in the manner required by 35 U.S.C. 112 if they are
 informal. A blanket rejection is usually sufficient.
 

 
 The examiner should attempt to point out the points of informality in
 the specification and claims. The burden is on the applicant to revise the application
 to render it in proper form for a complete examination.
 

 If a number of obviously informal claims are filed in an application,
 such claims should be treated as being a single claim for fee and examination
 purposes.
 

 It is to applicant’s advantage to file the
 application with an adequate disclosure and with claims which conform to the U.S. Patent
 and Trademark Office usages and requirements. This should be done whenever possible. If,
 however, due to the pressure of a Convention deadline or other reasons, this is not
 possible, applicants are urged to submit promptly, preferably within 3 months
 after filing, a preliminary amendment which corrects the obvious
 informalities. The informalities should be corrected to the extent that the disclosure
 is readily understood and the claims to be initially examined are in proper form,
 particularly as to dependency, and otherwise clearly define the invention. “New matter”
 must be excluded from these amendments since preliminary amendments filed after the
 filing date of the application do not enjoy original disclosure status. See
 MPEP
 § 608.04(b) .
 

 Whenever, upon examination, it is found that the terms or phrases or
 modes of characterization used to describe the invention are not sufficiently consonant
 with the art to which the invention pertains, or with which it is most nearly connected,
 to enable the examiner to make the examination specified in 37 CFR 1.104 , the
 examiner should make a reasonable search of the invention so far as it can be understood
 from the disclosure. The action of the examiner may be limited to a citation of what
 appears to be the most pertinent prior art found and a request that applicant correlate
 the terminology of the specification with art-accepted terminology before further action
 is made.
 

 Use form paragraph 7.01 where the terminology is such that
 a proper search cannot be made.
 

 ¶ 7.01 Use of Unconventional Terminology, Cannot Be Examined

 A preliminary examination of this
 application reveals that it includes terminology which is so different from that which is
 generally accepted in the art to which this invention pertains that a proper search of the
 prior art cannot be made. For example: [1] 

 Applicant is required to provide a
 clarification of these matters or correlation with art-accepted terminology so that a proper
 comparison with the prior art can be made. Applicant should be careful not to introduce any
 new matter into the disclosure (i.e., matter which is not supported by the disclosure as
 originally filed).
 

 A shortened statutory period for reply
 to this action is set to expire TWO MONTHS from the mailing date of this
 letter.
 

 Examiner Note:
 
 1. Use this or form paragraph
 7.02 when a
 proper search cannot be made. However, see MPEP § 702.01 which requires a
 reasonable search.
 

 2. In bracket 1, fill in an
 appropriate indication of the terminology, properties, units of data, etc. that are the
 problem as well as the pages of the specification involved.
 

 3. For the procedure to be followed
 when the drawing is not acceptable, see MPEP §§ 608.02(a) and
 608.02(b) .
 
 
 

 Use form paragraph 7.02 where the application is so
 incomprehensible that a reasonable search cannot be made.
 

 ¶ 7.02 Disclosure Is Incomprehensible

 The disclosure is objected to under
 37 CFR
 1.71 , as being so incomprehensible as to preclude a reasonable search of
 the prior art by the examiner. For example, the following items are not understood:
 [1] 

 Applicant is required to submit an
 amendment which clarifies the disclosure so that the examiner may make a proper comparison of
 the invention with the prior art.
 

 Applicant should be careful not to introduce any new matter into the
 disclosure ( i.e., matter which is not supported by the disclosure as
 originally filed).
 

 A shortened statutory period for reply
 to this action is set to expire TWO MONTHS from the mailing date of this
 letter.
 

 Examiner Note:
 
 1. Use this form paragraph when a
 search cannot be made.
 

 2. In bracket 1, indicate the page
 numbers and features which are not understood.
 

 3. See form paragraphs
 6.28 and
 6.30 for
 improper idiomatic English.
 

 4. Use form paragraphs
 7.31.01 –
 7.31.04 ,
 as appropriate, for a rejection of claims (when necessary) based on the deficiencies set
 forth in this form paragraph.
 
 
 

 For the procedure to be followed when the drawing is not acceptable, see
 MPEP §§
 608.02(a) and 608.02(b) .
 

 

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 701-Statutory Authority for Examination 

 702-Requisites of the Application 
 702.01-Obviously Informal Cases 

 
 

 703-[Reserved] 

 704-Search and Requirements for Information 
 704.01-Search 

 704.02-704.09-[Reserved] 

 704.10-Requirements for Information 

 704.11-What Information May Be Required 
 704.11(a)-Examples of Information Reasonably Required 

 704.11(b)-When May a Requirement for Information Be Made 

 
 

 704.12-Replies to a Requirement for Information 
 704.12(a)-Relationship of Requirement for Information to Duty of Disclosure 

 704.12(b)-What Constitutes a Complete Reply 

 704.12(c)-Treatment of an Incomplete Reply 

 
 

 704.13-Time Periods for Reply 

 704.14-Making a Requirement for Information 
 704.14(a)-Format of the Requirement 

 704.14(b)-Examiner’s Obligation Following Applicant’s Reply 

 704.14(c)-Petitions to Requirements Under 37 CFR 1.105 

 704.14(d)-Relationship to Information Disclosure Statements 

 
 

 
 

 705-Patentability Reports 
 705.01-Instructions re Patentability Reports 
 705.01(a)-Nature of P.R., Its Use and Disposal 

 705.01(b)-Sequence of Examination 

 705.01(c)-Counting and Recording P.R.s 

 705.01(d)-[Reserved] 

 705.01(e)-Limitation as to Use 

 705.01(f)-Interviews With Applicants 

 
 

 
 

 706-Rejection of Claims 
 706.01-Contrasted With Objections 

 706.02-Rejection on Prior Art 
 706.02(a)-[Reserved] 
 706.02(a)(1)-[Reserved] 

 706.02(a)(2)-[Reserved] 

 
 

 706.02(b)-[Reserved] 
 706.02(b)(1)-[Reserved] 

 706.02(b)(2)-[Reserved] 

 
 

 706.02(c)-[Reserved] 
 706.02(c)(1) -[Reserved] 

 706.02(c)(2)-[Reserved] 

 
 

 706.02(d)-[Reserved] 

 706.02(e)-[Reserved] 

 706.02(f)-[Reserved] 
 706.02(f)(1)-[Reserved] 

 706.02(f)(2)-[Reserved] 

 
 

 706.02(g)-[Reserved] 

 706.02(h)-[Reserved] 

 706.02(i)-[Reserved] 

 706.02(j)-[Reserved] 

 706.02(k)-[Reserved] 

 706.02(l)-[Reserved] 
 706.02(l)(1)-[Reserved] 

 706.02(l)(2)-[Reserved] 

 706.02(l)(3)-[Reserved] 

 
 

 706.02(m)-[Reserved] 

 706.02(n)-[Reserved] 

 
 

 706.03-Rejections Not Based on Prior Art 
 706.03(a)-[Reserved] 

 706.03(b)-[Reserved] 

 706.03(c)-[Reserved] 

 706.03(d)-[Reserved] 

 706.03(e)-[Reserved] 

 706.03(f) - 706.03(j)-[Reserved] 

 706.03(k)-[Reserved] 

 706.03(l) - 706.03(n)-[Reserved] 

 706.03(o)-[Reserved] 

 706.03(p) - 706.03(r)-[Reserved] 

 706.03(s)-[Reserved] 

 706.03(t)-[Reserved] 

 706.03(u)-[Reserved] 

 706.03(v)-[Reserved] 

 706.03(w)-[Reserved] 

 706.03(x)-[Reserved] 

 706.03(y)-[Reserved] 

 
 

 706.04-Rejection of Previously Allowed Claims 

 706.05-Rejection After Allowance of Application 

 706.06-Rejection of Claims Copied From Patent 

 706.07-Final Rejection 
 706.07(a)-Final Rejection, When Proper on Second Action 

 706.07(b)-Final Rejection, When Proper on First Action 

 706.07(c)-Final Rejection, Premature 

 706.07(d)-Final Rejection, Withdrawal of, Premature 

 706.07(e)-Withdrawal of Final Rejection, General 

 706.07(f)-Time for Reply to Final Rejection 

 706.07(g)-Transitional After-Final Practice 

 706.07(h)-Request for Continued Examination (RCE) Practice 

 
 

 
 

 707-Examiner’s Letter or Action 
 707.01-Primary Examiner Indicates Action for New Assistant 

 707.02-Applications Up for Third Action and 5-Year Applications 

 707.03‑707.04-[Reserved] 

 707.05-Citation of References 
 707.05(a)-Copies of Cited References 

 707.05(b)-Citation of Related Art and Information by Applicants 

 707.05(c)-Order of Listing 

 707.05(d)-Reference Cited in Subsequent Actions 

 707.05(e)-Data Used in Citing References 

 707.05(f)-Non-Patent Documents Having a Lengthy Citation 

 707.05(g)-Incorrect Citation of References 

 
 

 707.06-Citation of Decisions, Orders Memorandums, and Notices 

 707.07-Completeness and Clarity of Examiner’s Action 
 707.07(a)-Complete Action on Formal Matters 

 707.07(b) - 707.07(c)-[Reserved] 

 707.07(d)-Language To Be Used in Rejecting Claims 

 707.07(e)-Note All Outstanding Requirements 

 707.07(f)-Answer All Material Traversed 

 707.07(g)-Piecemeal Examination 

 707.07(h)-Notify of Inaccuracies in Amendment 

 707.07(i)-Each Claim To Be Mentioned in Each Office Action 

 707.07(j)-State When Claims Are Allowable 

 707.07(k)-Numbering Paragraphs 

 707.07(l)-Comment on Examples 

 
 

 707.08-Reviewing and Initialing by Assistant Examiner 

 707.09-Signing by Primary or Other Authorized Examiner 

 707.10-Entry 

 707.11-Date 

 707.12-Mailing 

 707.13-Returned Office Action 

 
 

 708-Order of Examination 
 708.01-List of Special Cases 

 708.02-Petition To Make Special 
 708.02(a)-Accelerated Examination 

 708.02(b)-Prioritized Examination 

 708.02(c)-Patent Prosecution Highway Program 

 
 

 708.03-Examiner Tenders Resignation 

 
 

 709-Suspension of Action 
 709.01-Overlapping Applications by Same Applicant or Owned by Same Assignee 

 
 

 710-Period for Reply 
 710.01-Statutory Period 
 710.01(a)-Statutory Period, How Computed 

 
 

 710.02-Shortened Statutory Period and Time Limit Actions Computed 
 710.02(a)-[Reserved] 

 710.02(b)-Shortened Statutory Period: Situations in Which Used 

 710.02(c)-Specified Time Limits: Situations in Which Used 

 710.02(d)-Difference Between Shortened Statutory Periods for Reply and Specified Time Limits 

 710.02(e)-Extension of Time 

 
 

 710.03-[Reserved] 

 710.04-Two Periods Running 
 710.04(a)-Copying Patent Claims 

 
 

 710.05-Period Ending on Saturday, Sunday, or a Federal Holiday 

 710.06-Situations When Reply Period Is Reset or Restarted 

 
 

 711-Abandonment of Patent Application 
 711.01-Express or Formal Abandonment 

 711.02-Failure To Take Required Action During Statutory Period 
 711.02(a)-Insufficiency of Reply 

 711.02(b)-Special Situations Involving Abandonment 

 711.02(c)-Termination of Proceedings 

 
 

 711.03-Reconsideration of Holding of Abandonment; Revival 
 711.03(a)-Holding Based on Insufficiency of Reply 

 711.03(b)-Holding Based on Failure To Reply Within Period 

 711.03(c)-Petitions Relating to Abandonment 

 711.03(d)-Examiner’s Statement on Petition To Set Aside Examiner’s Holding 

 
 

 711.04-Public Access to Abandoned Applications 
 711.04(a)-Date of Abandonment 

 711.04(b)-Ordering of Patented and Abandoned Files 

 711.04(c)-Notifying Applicants of Abandonment 

 
 

 711.05-Letter of Abandonment Received After Application Is Allowed 

 711.06-Abstracts, Abbreviatures, and Defensive Publications 
 711.06(a)-Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References 

 
 

 
 

 712-[Reserved] 

 713-Interviews 
 713.01-General Policy, How Conducted 

 713.02-Interviews Prior to First Official Action 

 713.03-Interview for “Sounding Out” Examiner Not Permitted 

 713.04-Substance of Interview Must Be Made of Record 

 713.05-Interviews Prohibited or Granted, Special Situations 

 713.06-No Inter Partes Questions Discussed Ex Parte 

 713.07-Exposure of Other Cases 

 713.08-Demonstration, Exhibits, Models 

 713.09-Interviews Between Final Rejection and Notice of Appeal 

 713.10-Interview Preceding Filing Amendment Under 37 CFR 1.312 

 
 

 714-Amendments, Applicant’s Action 
 714.01-Signatures to Amendments 
 714.01(a)-Unsigned or Improperly Signed Amendment 

 714.01(b)-[Reserved] 

 714.01(c)-Signed by Attorney or Agent Not of Record 

 714.01(d)-Amendment Signed by Applicant but Not by Attorney or Agent of Record 

 714.01(e)-Amendments Before First Office Action 

 
 

 714.02-Must Be Fully Responsive 

 714.03-Amendments Not Fully Responsive, Action To Be Taken 
 714.03(a)-Supplemental Amendment 

 
 

 714.04-Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty 

 714.05-Examiner Should Immediately Review 

 714.06-[Reserved] 

 714.07-Amendments Not in Permanent Ink 

 714.08-714.09-[Reserved] 

 714.10-Claims Added in Excess of Claims Previously Paid For 

 714.11-Amendment Filed During Interference Proceedings 

 714.12-Amendments and Other Replies After Final Rejection or Action 

 714.13-Amendments and Other Replies After Final Rejection or Action, Procedure Followed 

 714.14-Amendments After Allowance of All Claims 

 714.15-Amendment Received in Technology Center After Mailing of Notice of Allowance 

 714.16-Amendment After Notice of Allowance, 37 CFR 1.312 
 714.16(a)-Amendments Under 37 CFR 1.312, Copied Patent Claims 

 714.16(b)-Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 

 714.16(c)-Amendments Under 37 CFR 1.312, Additional Claims 

 714.16(d)-Amendments Under 37 CFR 1.312, Handling 

 714.16(e)-Amendments Under 37 CFR 1.312, Entry in Part 

 
 

 714.17-Amendment Filed After the Period for Reply Has Expired 

 714.18-Entry of Amendments 

 714.19-List of Amendments, Entry Denied 

 714.20-List of Amendments Entered in Part 

 714.21-Amendments Inadvertently Entered, No Legal Effect 

 714.22-714.24-[Reserved] 

 714.25-Discourtesy of Applicant or Attorney 

 
 

 715-Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) 
 715.01-37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits 
 715.01(a)-Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor 

 715.01(b)-Reference and Application Have Common Assignee 

 715.01(c)-Reference Is Publication of Inventor’s Own Invention 

 715.01(d)-Activities Applied Against the Claims 

 
 

 715.02-How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims 

 715.03-Genus-Species, Practice Relative to Cases Where Predictability Is in Question 

 715.04-Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations 

 715.05-U.S. Patent or Application Publication Claiming Same Invention 

 715.06-[Reserved] 

 715.07-Facts and Documentary Evidence 
 715.07(a)-Diligence 

 715.07(b)-Interference Testimony Sometimes Used 

 715.07(c)-Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country 

 715.07(d)-Disposition of Exhibits 

 
 

 715.08-Decided by Primary Examiner 

 715.09-Timely Presentation 

 715.10-Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode 

 
 

 716-Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections 
 716.01-Generally Applicable Criteria 
 716.01(a)-Objective Evidence of Nonobviousness 

 716.01(b)-Nexus Requirement and Evidence of Nonobviousness 

 716.01(c)-Probative Value of Objective Evidence 

 716.01(d)-Weighing Objective Evidence 

 
 

 716.02-Allegations of Unexpected Results 
 716.02(a)-Evidence Must Show Unexpected Results 

 716.02(b)-Burden on Applicant 

 716.02(c)-Weighing Evidence of Expected and Unexpected Results 

 716.02(d)-Unexpected Results Commensurate in Scope With Claimed Invention 

 716.02(e)-Comparison With Closest Prior Art 

 716.02(f)-Advantages Disclosed or Inherent 

 716.02(g)-[Reserved] 

 
 

 716.03-Commercial Success 
 716.03(a)-Commercial Success Commensurate in Scope With Claimed Invention 

 716.03(b)-Commercial Success Derived From Claimed Invention 

 
 

 716.04-Long-Felt Need and Failure of Others 

 716.05-Skepticism of Experts 

 716.06-Copying 

 716.07-Inoperability of References 

 716.08-Utility and Operability of Applicant’s Disclosure 

 716.09-Sufficiency of Disclosure 

 716.10-Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103 

 
 

 717-Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) 
 717.01-Affidavit or Declaration Under 37 CFR 1.130 
 717.01(a) -Declarations or Affidavits under 37 CFR 1.130(a) – Attribution 
 717.01(a)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) 

 
 

 717.01(b) -Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure 
 717.01(b)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) 

 717.01(b)(2) -Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated
 Prior Public Disclosure 

 
 

 717.01(c) -Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations 

 717.01(d)-U.S. Patent or Application Publication Claiming Same Invention 

 717.01(e) -Passed Upon (or Decided by) by Primary Examiner 

 717.01(f) -Seasonable (or Timely) Presentation 

 
 

 717.02 -Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) 
 717.02(a) -Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) 

 717.02(b) -Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked 

 717.02(c) -Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 717.02(d) -Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 
 

 
 

 718-Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c) 

 719-File Wrapper 
 719.01-Papers in Image File Wrapper 

 719.02-Residence of Inventor Changed 

 719.03-Classification During Examination 

 719.04-Index of Claims 

 719.05-Field of Search 

 
 

 720-Public Use Proceedings 

 721‑723-[Reserved] 

 724-Trade Secret, Proprietary, and Protective Order Materials 
 724.01-Completeness of the Patent File Wrapper 

 724.02-Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials 

 724.03-Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02 

 724.04-Office Treatment and Handling of Materials Submitted Under MPEP § 724.02 
 724.04(a)-Materials Submitted in an Application Covered by 35 U.S.C. 122 

 724.04(b)-Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b) 

 724.04(c)-Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d) 

 
 

 724.05-Petition To Expunge Information or Copy of Papers in Application File 

 724.06-Handling of Petitions To Expunge Information or Copy of Papers in Application File 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:43