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Patent Office Rules and Practice
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Publisher: Matthew Bender Elite Products
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The Cornerstone of Any Thriving Patent Law Practice.
Detailed Rule-by-Rule Analysis of the Patent and Trademark Office Rules of Practice.
Included is the text of the rules contained in Title 37 of the Code of Federal Regulations, interpretations of their meanings and explanations of their effect on practice with citations to relevant case law.
Covers Every Area of PTO Practice.
This essential reference provides patent registration applicants with guidelines on the practices and procedures relating to the filing and review of patent applications filed in the Patent and Trademark Office.
The Patent and Trademark Office's Rules Book.
This separate desk reference is updated quarterly, and saves extensive research time by centralizing the most recent statutes and regulations affecting patent law practice.
Practice-Proven Forms for Handling All Transaction With the PTO.
The forms, which are accepted by the PTO, cover nearly every aspect of practice before the PTO and almost every conceivable situation the practitioner might run into, including: transmittal letters for every type of submission to the PTO; forms necessary for filing regular, continuation-in-part, divisional, and international applications; requests for re-issue and re-examination; actions after final rejection and appeals; and responses, amendments, and various petitions to the PTO.
Available in both print and electronic formats, Patent Office Rules and Practice include:
• The text of the sections of various United States Code and Code of Federal Regulations titles that relate to patent law
• The full text of the Patent Cooperation Treaty, accompanying regulations and administrative instructions
• The text of the Manual of Patent Examining Procedure (MPEP)
• The text of selected relevant notices, directives, clarifications and Helpful Hints issued by the PTO
• More than 350 practice-proven blank forms that can be filled out, and filed with the PTO
• The forms include checklists of what must be done to submit an application
The previous edition ISBN is 9780820521176 and is no longer available.
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VOLUME 1
Rules 1–29: The Patent Office
Rules 31–36: Attorneys: Appointment and Prosecution
Rules 41–69: Filing Patent Application
Rules 71–74: Disclosure I (Specification)
Rule 75: Disclosure II (Patent Claims)
VOLUME 2
Rules 76–80: Disclosure III
Rules 81–98: Disclosure IV
Rule 99: [Reserved]
Rules 101–110: Examination and Rejection
VOLUME 3
Rules 111–114: Response and Further Consideration
Rules 115–129: Amendments
Rules 130–133: Overcoming Rejections: Affidavits and Interviews
Rules 134–140: Time for Response—Abandonment
Rules 141–146: Division and Election of Species
Rules 151–155: Design Applications
Rules 161–167: Plant Applications
Rules 171–179: Reissue Applications
Rules 181–188: Petition and Rules
Appendix XVIIA: Ombudsman Pilot Program
Rules 191–198: Ex Parte Appeal: Board
Rules 211–221: Publication of Applications
Rules 248–251: Miscellaneous Provisions
Rules 290–291: Preissuance Submissions and Protests by Third Parties
Rules 311–318: Allowance and Issuance of Patent
Rules 321–325: Disclaimer and Correction of Patent
Rule 335: Filing Notice of Arbitration Award
Rules 351–352: Amendment of Rules
Rules 360–378: Maintenance Fees
Rules 401–499: International Processing Provisions
VOLUME 4
Chapter XXXVIA: Coordination Between the U.S. Patent and Trademark Office and Foreign Patent Offices
Rules 501–570: Reexamination
Rules 601–626: Supplemental Examination of Patents
Rules 701–791: Extension of Patent Term
Appendix XXXIXA: FDA Regulations on Extension of Patent Term
Rules 801–809: Biotechnology Disclosure; Deposit of Biological Material
Rules 821–825: Application Disclosures Containing Nucleotide and/or Amino Acid Sequences
Rules 3.1–3.85: Assignment, Recording and Rights of Assignee
Rules 902–997: [Reserved]
Rules 1001–1071: International Design Application
Appendix XLVA: Guide to the International Registration of Industrial Designs Under the Hague Agreement
VOLUME 5
Rules 11.1–11.901: Representation of Others Before the United States Patent and Trademark Office
Rules 41.1–41.208: Practice Before the Patent Trial and Appeal Board
Appendix XLVIIA: United States Patent and Trademark Office Board of Appeals and Inferences Trial Section CONTESTED CASE PRACTICE GUIDE
Rules 42.1–42.80: Trial Practice Before the Patent Trial and Appeal Board
Rules 42.100–42.123: Inter Partes Review
Appendix XLIXA: Patent Trial and Appeal Board Standard Operating Procedures
Rules 42.200–42.224: Post Grant Review
Rules 42.300–42.304: Transitional Program for Covered Business Method Patents
Rules 42.400–42.412: Derivation Proceedings
Rules 90.1–90.3: Judicial Review of Patent Trial And Appeal Board Decisions
Appendix LIIA: Federal Circuit Rules of Practice
Commentary Index
VOLUME 6
NOTICES from 2015 through 2016
VOLUME 7
NOTICES from 2017 through 2020
VOLUME 8
NOTICES from 2021 through 2023
Notices Index
VOLUME PATENT OFFICE RULES BOOK
United States Code
Patent Laws
Selected Texts Current Through: Public Law 118-209, approved December 23, 2024, with a gap of Public Law 118-159
Index to the Patent-Related Sections of the United States Code
Leahy-Smith America Invents Act
Title 37 Patents, Trademarks, and Copyrights
Consolidated Patent Rules
Selected Texts Current Through: Federal Register, Volume 90, Number 8, January 14, 2025, with the exception of the amendments appearing at 90 FR 3376
Index to 37 Code of Federal Regulations
Patent Cooperation Treaty
Regulations under the Patent Cooperation Treaty (as in force from July 1, 2024)
Administrative Instructions under the Patent Cooperation Treaty (as in force from July 1, 2024)
Paris Convention
The Hague Agreement Concerning the International Registration of Industrial Designs—Geneva Act of July 2, 1999
Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement (as in force on January 1, 2024)
Administrative Instructions for the Application of the Hague Agreement (as in force on April 1, 2022)
VOLUME ★
Chapter 1. Declarations by Inventor, Applicant, Assignee
Chapter 2. Powers Of Attorney, Correspondence Address, and Authorizations by Applicant
Chapter 3. Designs
Chapter 4. Transmittals of Patent Applications, Application Data Sheet and Other Submissions Upon Filing
Chapter 5. Completion of Filing Requirements
Chapter 6. Duty of Candor and Information Disclosure Statement
VOLUME ★★
Chapter 7. Small Entities
Chapter 8. Certificate Of Mailing, Priority Mail Express and Facsimile Transmissions
Chapter 9. Prioritized Examination, Petitions to Make Special, PPH and Related Prioritization Forms
VOLUME ★★★
Chapter 10. Matters During Prosecution
Chapter 11. Extensions of Time and Petitions for Revival of Patent and Patent Term Adjustment
Chapter 12. Appeal to the Patent Trial and Appeal Board
Chapter 13. PCT International Application and U.S. National Processing
Chapter 14. Matters After Patent Grant
Chapter 15. Appeals to the CAFC
VOLUME ★★★★
Chapter 16. Assignments
Chapter 17. Reissue Forms
Chapter 18. Reexamination
Chapter 19. Miscellaneous Forms
Chapter 20. Fees
Chapter 21. Maintenance Fees
Chapter 22. Licenses for Foreign Filing
Chapter 23. Provisional Applications
Chapter 24. European Patent Office
Chapter 25. Publication
Chapter 26. Electronic Business Center
Chapter 27. Interferences
Chapter 28. AIA Forms
Chapter 29. Inter Partes and Post-Grant Review
Chapter 30. International Design Applications and U.S. National Processing
Forms Index