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Are there any exceptions to how references are cited in patent examinations?

A

Are there any exceptions to how references are cited in patent examinations?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-10
10 Rules5 Related FAQs

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Yes, there are exceptions to the general citation procedures in patent examinations. MPEP 707.05(c) notes:

With the exception of applicant submitted citations, MPEP § 609 and § 708.02, it is recommended that the pertinent features of references which are not used as a basis for rejection be pointed out briefly.

This means that applicant-submitted citations and references discussed in MPEP § 609 (Information Disclosure Statements) and § 708.02 (Petition to Make Special) may be handled differently. For these exceptions, the examiner may not need to provide brief descriptions of pertinent features if the references are not used as a basis for rejection.

  • How References Are Modified for Obviousness Rejections Must Be Clearly ExplainedMPEP 707Recommended
  • Examiner May Rely on Applicant Admissions for RejectionsMPEP 707Permitted
  • Figures and References for Prosecution ContinuationMPEP 707Permitted
  • All Cited References Must Be ListedMPEP 707.05(c)
  • Identifying Data Must Be Placed on PTO-892 FormMPEP 707.05(c)Recommended
  • Sequence Listing Requirement for FilingMPEP 707.05(c)
  • Examiner Must Thoroughly Study and Investigate Patent ApplicationsMPEP 707Required
  • Examiner Must Thoroughly Study and Investigate Prior Art During ReexaminationMPEP 707Required
  • Comprehensive Examination Required for Patentability and ComplianceMPEP 707Required
  • International-Type Search Required for National Applications Filed After June 1, 1978MPEP 707Required
  • How should patent examiners treat different types of references in their citations?
  • What is the purpose of Form PTO-892 in patent examination?
  • What should patent examiners include about references not used for rejection?
  • What is the significance of MPEP § 1302.12 in relation to reference citations?
  • What is the significance of 35 U.S.C. 301 in citing prior art?
Tags: Applicant Submitted Citations, Citation Exceptions, Information Disclosure Statements, petition to make special
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