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:
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.
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:
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:
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.
Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.
Pursuant to 35 U.S.C. 4, patent examiners, other Office employees, and Office officers may not apply for a patent or acquire any right or interest in any patent during the period of their employment with the Office and for one year thereafter. An Office employee or officer who is named as an inventor in a patent application will be presumed (1) to be legally incapable of signing the inventor's oath or declaration pursuant to 35 U.S.C. 4, or (2) to refuse to sign the inventor's oath or declaration based on Office employee status. For applications filed on or after September 16, 2012, a substitute statement under 37 CFR 1.64 may be filed in lieu of the oath or declaration without contacting the current employee or officer of the Office.
The amendments to 37 CFR 11.10 were made, in part, to ensure that the restrictions of the post-employment agreement in this provision are coextensive with the post-employment restrictions in 18 U.S.C. 207. Notwithstanding the elimination of 37 CFR 11.10(d), Office employees remain barred from prosecuting, or aiding in the prosecution of, any patent or trademark application before the Office by virtue of conflict-of-interest statutes, such as 18 U.S.C. 203 and 205, as well as regulations, such as those promulgated by the Office of Government Ethics in 5 CFR chapter XVI. Similarly, the provision in former 37 CFR 11.10(e) that practice before the USPTO by Government employees is subject to applicable conflict-of-interest laws, regulations, or codes of professional responsibility is already set forth in 37 CFR 11.111. See also MPEP § 309.
The Official Gazette of the United States Patent and Trademark Office (Official Gazette) is published electronically every Tuesday in two sections, the Official Gazette – Patents and the Official Gazette – Trademarks.
The Official Gazette — Patents reports the reexamination certificates, reissues, plant patents, utility patents, and design patents issued and statutory invention registrations (if any) published on that day. The Electronic Official Gazette — for Patents (eOG:P) (www.uspto.gov/learning-and-resources/ official-gazette/official-gazette-patents ) allows browsing through the issued patents for the week. The eOG:P can be browsed by classification or type of patent, for example, utility, design, and plant. Specific patents can be accessed by class/subclass or patentee name. Links are provided to the various pages of the eOG:P:
As to each patent, the following information may be given:
The Official Gazette – Trademarks is published electronically and contains an illustration of each trademark published for opposition, an alphabetical list of registered trademarks, a classified list of registered trademarks, an index of registrants, a list of canceled trademark registrations, and a list of renewed trademark registrations.
The information in the Official Gazette pertaining to each issued patent and each trademark registration can be obtained from the Patent Grants Database and the U.S. Trademark Electronic Search System (TESS) respectively, both also available on the USPTO website.
Regular and special notices of the United States Patent and Trademark Office are published in the Official Gazette Notices, both as part of the Electronic Official Gazette — Patents (eOG:P) and as a separate publication. The notices that are included in this publication include notices of patent and trademark suits, disclaimers filed, Certificates of Correction issued, lists of applications and patents available for license or sale, notices of 37 CFR 1.47 applications, and general information such as orders, notices, changes in rules, changes in classification, certain adverse decisions in interferences, the condition of work in the Office, registration of attorneys and agents, reprimands, suspensions, and exclusions of registered attorneys and agents, and notices to parties not reached by mail. The Official Gazette Notices are available on the United States Patent and Trademark Office website (www.uspto.gov/ learning-and-resources/official-gazette ).
The USPTO maintains an automated data management system for the retrieval and/or online updating of the computer record of each patent application. The USPTO also maintains integrated examination tools which display examiner time, activity, and docket records, and technical support staff backlog records.
To retrieve data from the automated data management system transactions are entered by keyed entries or by making an appropriate choice in a drop-down menu. Among other items, classification, examiner docket, attorney, inventor, status, and prosecution history data as well as the location of each paper application can be retrieved and updated online.
Examiner dockets are maintained in the automated data management system and the integrated examination tools simultaneously with the recording of incoming and outgoing communications, transfers of applications to and from dockets, and other types of updating of the application record. The status of each examiner’s docket can be determined by means of the integrated examination tools. Examiner dockets include the individual examiner new and amended docket which lists applications as regular, special, or expedited applications in priority order; the individual examiner rejected application docket; and the individual examiner new application profile, which lists the totals of new applications in each docket. Various summaries of the above reports at the art unit, Technology Center (TC), and corps levels are also available.
All reporting of examiner time and activity is performed on a biweekly basis. Each examiner’s examining and non-examining time, as entered in the USPTO’s time and attendance system, is used by the integrated examination tools in the computation of productivity data. Examiners can view biweekly time and activity reports through the integrated examination tools, which include a list, by application number, of all applications for which actions have been counted during the biweekly period. The type of action counted for each application is also indicated on the report. The examiner may also review time data, an action summary, and cumulative summaries to date for the current quarter and fiscal year. Various summary reports at the Art Unit, TC, and Corps levels are also produced.
Actions prepared by examiners are submitted electronically and sent to their respective legal instrument examiners for entry of the type of Office action into the USPTO’s automated data management system and for mailing.
Each examiner’s action that is counted and reported to the USPTO’s integrated examination tools will be listed by application number on their individual time and activity report. The time and activity report should be checked by the examiner to verify that all applications worked on for the biweekly report period are properly listed.
Office actions on the merits consist of rejections (final and non-final), Ex parte Quayle actions, and allowances.
The first time an examiner performs one of the above merit actions, credit is received for a First Action on the Merits (FAOM) on the production reports.
A second/subsequent FAOM usually occurs when the first action is a mailed restriction/election action and the second action is an action on the merits. The USPTO’s automated data management system will automatically determine if it is a FAOM. If the second action is a FAOM the examiner will be credited for FAOM on the production report.
An examiner receives a "disposal" credit for the following actions:
These same items constitute the "disposals" for performance evaluation of examining art units and TCs. However, disposals at the Office level consist only of allowances and abandonments.
For either an allowance or an abandonment after an Examiner’s Answer or decision by a court or the Patent Trial and Appeal Board, no disposal credit is received, though these actions are indicated on the examiner’s individual time and activity report.
The Office of the Solicitor forwards to the Office of the Commissioner for Patents copies of all recent court decisions in patent cases where a precedential opinion is issued. The Office of the Commissioner for Patents will routinely forward these opinions to TC Directors, the Office of Patent Training, and the Director of the Office of Patent Quality Assurance.
TC Directors, in turn, are to make copies available to supervisors and other individuals as the TC Director determines to be appropriate. TC Directors are encouraged to discuss the contents of the opinions in their staff meetings, particularly where such meetings are being held to reinforce examination quality.
A decision rendered by the Patent Trial and Appeal Board (Board) is returned to the examiner. The examiner takes action consistent with the decision rendered by the Board unless rehearing of the Board decision is requested (MPEP § 1214.03). The TC Director may circulate and discuss the decision among some or all of the supervisors in the TC, and the supervisors, in turn, may circulate the decision among the examiners in their art units, depending on the subject matter or issues in the decisions.
In the event the Patent Trial and Appeal Board (Board) or court decision is one that significantly adds to the body of law by, for example, addressing a new legal or procedural issue, or providing a new interpretation of a prior decision, such a decision may result in a United States Patent and Trademark Office (USPTO) memorandum pointing out the significance of the decision to the examination process.
When any examiner or supervisor in the Patent Examining Corps (Corps) concludes that a recent decision of the Board or a court affects existing USPTO policy or practice, the matter should be brought to the attention of the appropriate TC Director through normal chain-of-command procedures.
When the TC Director believes that guidance to the Corps is warranted as a result of a decision, the TC Director should consult with the Deputy Commissioner for Patents who oversees the Office of Petitions and provide a draft of the guidance that is recommended as appropriate under the circumstances. The Deputy Commissioner for Patents who oversees the Office of Petitions will then consult appropriate Office officials, as necessary, to formulate a recommendation to the Commissioner for Patents on the policy implications of the decision's opinion.
It may be necessary for the Director, General Counsel, Solicitor, Chief Administrative Patent Judge, Commissioner for Patents, one or more Deputy Commissioners for Patents and TC Director making the recommendation to meet to review and discuss the policy ramifications of the decision's opinion and recommended guidance to enable the Director to determine how the USPTO will proceed.
Communication of the determination of the policy implications of the court or Board decision will normally take place by either notice in the Official Gazette and/or via memorandum to USPTO personnel. Ultimately, the policy implications of the decision will be officially incorporated into the Manual of Patent Examining Procedure and Office of Patent Training curriculum materials during the next update cycle for these reference materials.
General information about patents, trademarks, products and services offered by the United States Patent and Trademark Office (USPTO), and other related information is available by contacting the USPTO Contact Center at:
800-PTO-9199 or 571-272-1000
(TDD) 571-272-9950
An automated message system is available 7 days a week, 24 hours a day providing informational responses to frequently asked questions and the ability to order certain documents. Customer service representatives are available to answer questions, send materials or connect customers with other offices of the USPTO from 8:30 a.m. - 8:00 p.m. ET, Monday-Friday (excluding federal holidays).
For other technical patent information needs, the Inventors Assistance Center can be reached through customer service representatives at the above numbers, Monday through Friday (except federal holidays) from 8:30 a.m. to 5:00 p.m. ET.
General information can also be obtained in person from the Public Search Facilities of the USPTO. See subsection IV. below.
The USPTO website (www.uspto.gov ) provides a wealth of information to all users. The USPTO website offers links to news and notices (such as announcements, press releases, Official Gazette Notices and Federal Register Notices), USPTO contacts and addresses, activities and education related pages (such as the PTDL program and the Kids Pages), patent specific information (such as issued patents and published patent applications, general information pertaining to applying for a patent, electronic filing of patent applications, and reference materials such as the MPEP and examination guidelines), and trademark specific information (such as the Trademark Manual of Examining Procedure and the U.S. Trademark Electronic Search System (TESS)). In addition, the website allows downloading of a variety of USPTO forms (including PCT forms), ordering copies of patents and trademarks, accessing a list of all current fees, paying patent maintenance fees, replenishing deposit accounts, accessing various legal materials, linking to related websites, etc.
The Patent Electronic Business Center (EBC) assists USPTO customers with electronic patent application submissions via the USPTO patent electronic filing system and with the review of patent applications in Private PAIR. The EBC offers online electronic filing information, instructional material, PatentIn and Checker support and is available to assist users through one-on-one support during its normal business hours. The EBC also serves as a liaison in directing customers to other USPTO organizations that can address their specialized business issues and needs. The hours of operation of the EBC are Monday through Friday, 6 a.m. - midnight (ET). The EBC can be reached by telephone at 866-217-9197 (toll-free) or 571-272-4100. The EBC may be reached by email at ebc@uspto.gov and by fax at 571-273-0177.
The Patent Grants Database provides access to the full-text of all U.S. patents issued since 1976, and to the full-page images of all U.S. patents issued since 1790.
The Patent Applications Database provides both full-text and full-page images of all U.S. patent applications published since March 15, 2001.
Status information relating to patent applications is available through Patent Center and Private Patent Application Information Retrieval (PAIR). In Patent Center, information is available relating to issued patents, published patent applications, and applications to which a patented or published application claims domestic priority. In Private PAIR, an applicant (or a registered practitioner with power of attorney) can securely track the progress of the applicant's application(s) through the USPTO. Private PAIR makes available information relating to unpublished patent applications, but the applicant must associate a Customer Number with the application to obtain access. See MPEP § 403 for Customer Number practice.
The Image File Wrapper (IFW) system uses image technology to replace the paper processing of patent applications in the Office. Paper components of these application files (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) have been scanned to create electronic image files. For patent applications in the IFW system, the IFW file is the Official file and no access is granted to the original paper document sheets used to create the IFW file. All processing and examination is conducted using the electronic images instead of the paper source documents.
If an IFW file has been created for a patented application, published application, or an application to which a patented or published application claims domestic priority, the IFW file (with the exception of non-patent literature) is accessible through Patent Center and Private PAIR. All patent applications filed after June 30, 2003 have been scanned into the IFW system and will be available in Patent Center and Private PAIR as soon as they have been published or patented. Non-patent literature (NPL) may be viewed using Private PAIR (if an IFW file has been created) or obtained from the Patent and Trademark Copy Fulfillment Branch of the Public Records Division.
Questions about IFW images viewed in Private PAIR should be directed to the Patent EBC.
Assignment information is available for issued patents and published applications recorded since August 1980. AOTW is available at
www.uspto.gov/patent/laws-and-regulations/ power-attorney-and-assignment/assignments-web-aotw. Questions or concerns regarding the data displayed may be directed to the Assignment Services Division at assign@uspto.gov or 571-272-3350.
Global Dossier Public Access provides secure, online, one-stop access to and management of dossier information of all applications that comprise a family and that have been filed in multiple participating patent offices. This includes the IP5 Offices, international applications filed under the Patent Cooperation Treaty (PCT), as well as patent applications from World Intellectual Property Organization-Centralized Access to Search and Examination (WIPO-CASE) participating offices. Global Dossier includes a Citation List that provides a comprehensive listing of relevant citations in related applications that share a common priority claim. By using this service, examiners are able to view Office actions (along with machine translations), citations, and classification data for those applications in real time. In addition, Global Dossier provides Office action Indicators to assist examiners quickly identify applications that contain Office actions. See www.wipo.int/case/en/ for additional information regarding WIPO-CASE. For more information regarding the Global Dossier see www.uspto.gov/GlobalDossier.
The USPTO patent electronic filing system allows customers to electronically file patent application documents securely via the Internet. See the Legal Framework for Patent Electronic System
(www.uspto.gov/ patents-application-process/ filing-online/legal-framework-efs-web )
for submissions via EFS-Web. See also MPEP § 502.05.
The Office of Finance Online page Fees Self-Service Portal available at www.uspto.gov/FinancialManager may be used to access the Patent Maintenance Fees Storefront to pay maintenance fees, the Financial Manager to maintain and replenish deposit account, or the current USPTO
