Patent Office Rules and Practice

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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. This important volume has been expanded to include the Leahy-Smith America Invents Act, passed by Congress and signed into law by President Barack Obama on September 16, 2011.

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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Table of contents

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

Rule 188

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

Rule 499

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

Rule 750:

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

Rule 41.208

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

Rule 90: Judicial Review of Patent Trial And Appeal Board Decisions

Rule 90.3

Appendix LIIA: Federal Circuit of Practice

Commentary Index

VOLUME 6

Notices Index

NOTICES from 2005 through 2010

VOLUME 7

NOTICES from 2011 through 2012

VOLUME 8

NOTICES from 2013 through 2020

VOLUME PATENT OFFICE BOOK

Patent-Related Sections of the United States Code

Index to the Patent-Related Sections of the United States Code

Leahy-Smith America Invents Act

37 Code of Federal Regulations Patents, Trademarks, and Copyrights

Index to 37 Code of Federal Regulations

Patent Cooperation Treaty

Regulations under the Patent Cooperation Treaty (as in force from July 1, 2020)

Administrative Instructions under the Patent Cooperation Treaty (as in force from July 1, 2020)

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

Administrative Instructions for the Application of the Hague Agreement

VOLUME ★

Forms Index

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

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

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