MPEP § 1701 — MPEP § 1701
Current through: 2022-07-01

1701-Office Personnel Not To Express Opinion on Validity, Patentability, Expiration Date, or Enforceability of Patent 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1700 

 Section 1701 
 

 
 
 
 
 
 1701 Office Personnel Not To Express Opinion on Validity,
 Patentability, Expiration Date, or Enforceability of Patent [R-10.2019]
 

 Every patent is presumed to be valid. See 35 U.S.C. 282 , first
 sentence. Public policy demands that every employee of the United States Patent and
 Trademark Office (USPTO) refuse to express to any person any opinion as to the validity or
 invalidity of, or the patentability or unpatentability of any claim in any U.S. patent or
 the expiration date of any patent, except to the extent necessary to carry out: 
 

 
 (A) an examination of a non-reissue patent application
 where determination of the expiration date of a patent is necessary to conduct
 examination of the non-reissue patent application,
 

 (B) an examination of a reissue application of the patent, 

 (C) a supplemental examination proceeding or reexamination proceeding to
 reexamine the patent,
 

 (D) an interference or derivation proceeding involving the patent, 

 (E) a patent term adjustment or extension under
 35 U.S.C.
 154 and/or 35 U.S.C. 156 where determination
 of the expiration date of a patent is necessary to determine the adjustment or
 extension,
 

 (F) a notification that a patent has expired for failure
 to pay maintenance fee, 
 

 (G) a consideration of a request under the regulations
 (e.g., a petition) wherein determination of patent term is necessary or arises as an
 ancillary matter, or
 

 (H) an inter partes or post-grant
 review of the patent.
 

 
 The question of validity or invalidity is otherwise exclusively a matter
 to be determined by a court. Likewise, the question of enforceability or unenforceability
 is exclusively a matter to be determined by a court. Members of the patent examining corps
 are cautioned to be especially wary of any inquiry from any person outside the USPTO,
 including an employee of another U.S. government agency, the answer to which might indicate
 that a particular patent should not have issued. No USPTO employee may pursue a bounty
 offered by a private sector source for identifying prior art. The acceptance of payments
 from outside sources for prior art search activities may subject the employee to
 administrative disciplinary action. 
 

 Office employees may provide factual information regarding
 the calculation of patent term in general (i.e., a
 design patent term is 15 years-from-grant if the underlying design patent application was
 filed on or after May 13, 2015, and 14 years-from-grant if the design application was filed
 earlier). However, office employees should refuse to provide a determination or express an
 opinion addressing any patent owner or public inquiries as to a
 specific patent's expiration date, except as
 provided above in items A-H. A number of factors may affect calculation of a patent term
 expiration date, both pre- and post-issuance, that may create difficulty in accurately
 calculating the term of a patent. In the event of any inquiries, the USPTO has provided a
 downloadable patent term calculator as a resource to help the public estimate the
 expiration date of a patent at www.uspto.gov/patent /laws-and-regulations/ patent-term-calculator . See
 also MPEP §
 2701 . 
 

 When a field of search for an invention is requested, examiners should
 routinely inquire whether the invention has been patented in the United States. If the
 invention has been patented, no field of search should be suggested. 
 

 Employees of the USPTO, particularly patent examiners who examined an
 application which matured into a patent or a reissued patent or who conducted a
 reexamination proceeding, should not discuss or answer inquiries from any person outside
 the USPTO as to whether or not a certain reference or other particular evidence was
 considered during the examination or proceeding and whether a claim would have been allowed
 over that reference or other evidence had it been considered during the examination or
 proceeding. Likewise, employees are cautioned against answering any
 inquiry concerning any entry in the patent or reexamination file, including the extent of
 the field of search and any entry relating thereto. The record of the file of a patent or
 reexamination proceeding must speak for itself. 
 

 Practitioners shall not make improper inquiries of members of the patent
 examining corps. Inquiries from members of the public relating to the matters discussed
 above must out of necessity be refused and such refusal should not be considered
 discourteous or an expression of opinion as to validity, patentability or enforceability. 
 

 The definitions set forth in 37 CFR 104.1 and the exceptions in
 37 CFR
 104.21 are applicable to this section.
 

 
 1701.01 Office Personnel Not To Testify [R-10.2019]

 It is the policy of the United States Patent and Trademark Office
 (USPTO) that its employees, including patent examiners, will not appear as witnesses or
 give testimony in legal proceedings, except under the conditions specified in
 37 CFR Part 104,
 Subpart C . The definitions set forth in 37 CFR 104.1 and
 the exceptions in 37
 CFR 104.21 are applicable to this section. Any employee who
 testifies contrary to this policy will be dismissed or removed. 

 Whenever an employee of the USPTO, including a patent examiner, is
 asked to testify or receives a subpoena, the employee shall immediately notify the
 Office of the USPTO General Counsel. Inquiries requesting testimony shall be also
 referred immediately to the Office of the USPTO General Counsel. 
 

 

 Any individual desiring the testimony of an employee of the USPTO,
 including the testimony of a patent examiner or other quasi-judicial employee, must
 comply with the provisions of 37 CFR Part 104, Subpart C .
 

 A request by a third party to take deposition testimony of a patent
 examiner in a pending ex parte reexamination proceeding will
 generally be denied in view of the ex parte nature of the
 reexamination proceeding.
 

 A request for testimony of an employee of the USPTO should be made to
 the Office of the USPTO General Counsel at least ten (10) working days 
 prior to the date of the expected testimony. 
 

 Patent examiners and other USPTO employees performing or assisting in
 the performance of quasi-judicial functions, are forbidden to testify as experts or to
 express opinions as to the validity of any patent.
 

 If an employee is authorized to testify, the employee will be limited
 to testifying about facts within the employee’s personal knowledge. Employees are
 prohibited from giving expert or opinion testimony. Likewise, employees are prohibited
 from answering hypothetical or speculative questions. Fischer & Porter Co.
 v. Corning Glass Works, 61 F.R.D. 321, 181 USPQ 329 (E.D. Pa. 1974). See
 also In re Mayewsky, 162 USPQ 86, 89 (E.D. Va. 1969) (deposition of
 an examiner must be restricted to relevant matters of fact and must avoid any
 hypothetical or speculative questions or conclusions based thereon);
 ShafferTool Works v. Joy Mfg. Co., 167 USPQ 170 (S.D. Tex. 1970)
 (deposition of examiner should be limited to matters of fact and must not go into
 hypothetical or speculative areas or the bases, reasons, mental processes, analyses, or
 conclusions of the examiner in acting upon a patent application). Employees will not be
 permitted to give testimony with respect to subject matter which is privileged. Several
 court decisions limit testimony with respect to quasi-judicial functions performed by
 employees. Those decisions include United States v. Morgan, 313 U.S.
 409, 422 (1941) (improper to inquire into mental processes of quasi-judicial officer or
 to examine the manner and extent to which the officer considered an administrative
 record); Western Electric Co. v. Piezo Technology, Inc., 860 F.2d
 428, 8 USPQ2d 1853 (Fed. Cir. 1988) (patent examiner may not be compelled to answer
 questions which probe the examiner’s technical knowledge of the subject matter of a
 patent); McCulloch Gas Processing Co. v. Department of Energy, 650
 F.2d 1216, 1229 (Temp. Emer. Ct. App. 1981) (discovery of degree of expertise of
 individuals performing governmental functions not permitted); In re
 Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988) (technical or
 scientific qualifications of examiners-in-chief are not legally relevant in appeal under
 35 U.S.C.
 134 since board members need not be skilled in the art to render
 obviousness decision); Lange v. Commissioner, 352 F. Supp. 116, 176
 USPQ 162 (D.D.C. 1972) (technical qualifications of examiners-in-chief not relevant in
 35 U.S.C.
 145 action). 
 

 In view of the discussion above, if an employee is authorized to
 testify in connection with the employee’s involvement or assistance in a quasi-judicial
 proceeding which took place before the USPTO, the employee will not be permitted to give
 testimony in response to questions that the Office determines are impermissible.
 Impermissible questions include, but are not limited to, questions directed to
 discovering the mental processes or expertise of a quasi-judicial official, such as:
 

 
 (A) Information about that employee’s: 
 
 (1) Background;

 (2) Expertise;

 (3) Qualifications to examine or otherwise consider a
 particular patent or trademark application;
 

 (4) Usual practice or whether the employee followed a procedure
 set out in any Office manual of practice (including the MPEP or TMEP) in a
 particular case;
 

 (5) Consultation with another Office employee;

 (6) Understanding of: 
 
 (a) A patented invention, an invention sought to be
 patented, or patent application, patent, reexamination or interference
 file;
 

 (b) Prior art;

 (c) Registered subject matter, subject matter sought to
 be registered, or a trademark application, registration, opposition,
 cancellation, interference, or concurrent use file;
 

 (d) Any Office manual of practice;

 (e) Office regulations;

 (f) Patent, trademark, or other law; or

 (g) The responsibilities of another Office employee;

 
 

 (7) Reliance on particular facts or arguments;

 
 

 (B) To inquire into the manner in and extent to which the employee
 considered or studied material in performing a quasi-judicial function; or
 

 (C) To inquire into the bases, reasons, mental processes, analyses,
 or conclusions of that Office employee in performing the quasi-judicial
 function.
 

 
 Any request for testimony addressed or delivered to the Office of the
 USPTO General Counsel shall comply with 37 CFR 104.22(c) . All requests must
 be in writing. The need for a subpoena may be obviated where the
 request complies with 37 CFR 104.22(c) if the party requesting the testimony further
 meets the following conditions:
 

 
 (A) The party requesting the testimony identifies the civil action or
 other legal proceeding for which the testimony is being taken. The identification
 shall include the: 
 
 (1) Style of the case;

 (2) Civil action number;

 (3) District in which the civil action is pending;

 (4) Judge assigned to the case; and 

 (5) Name, address, and telephone number of counsel for all
 parties in the civil action. 
 

 
 

 (B) The party agrees not to ask questions seeking information which
 is precluded by 37 CFR 104.23 ;
 

 (C) The party shall comply with applicable provisions of the Federal
 Rules of Civil Procedure, including Rule 30, and give ten (10) working days notice
 to the Office of the USPTO General Counsel prior to the date a deposition is
 desired. Fifteen (15) working days notice is required for any deposition which is
 desired to be taken between November 15 and January 15;
 

 (D) The party agrees to notice the deposition at a place convenient
 to the USPTO. The Conference Room in the Office of the USPTO General Counsel is
 deemed to be a place convenient to the Office; and
 

 (E) The party agrees to supply a copy of the transcript of the
 deposition to the USPTO for its records. 
 

 
 Absent a written agreement meeting the conditions specified in
 paragraphs (A) through (E), a party must comply with the precise terms of
 37 CFR
 104.22(c) and the USPTO will not permit a deposition without
 issuance of a subpoena. 
 

 

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 1701-Office Personnel Not To Express Opinion on Validity, Patentability, Expiration Date, or Enforceability of Patent 
 1701.01-Office Personnel Not To Testify 

 
 

 1702-Restrictions on Current and Former Office Employees Regarding Patent Matters 

 1703-The Official Gazette 

 1704-Application Records and Reports 

 1705-Examiner Docket, Time, and Activity Recordation 

 1706-1719-[Reserved] 

 1720-Dissemination of Court and Patent Trial and Appeal Board Decisions 

 1721-Treatment of Court and Patent Trial and Appeal Board Decisions Affecting Patent and Trademark Office Policy and Practice 

 1722-1729-[Reserved] 

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 Last Modified: 
 
 03/09/2026 20:49:27