Are there exceptions to using the PTO-892 form for citing references?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 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 is an exception to using the PTO-892 form for citing references. The MPEP 707.05(d) states: “…unless applicant has listed the reference on a form PTO/SB/08 that has been initialed by the examiner.” This means that if the applicant has already listed the reference on a PTO/SB/08 form (Information Disclosure Statement) and the examiner has initialed it, indicating they have considered the reference, the examiner does not need to cite it again using the PTO-892 form. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Requirement for Citing References MPEP 707 Required Reference Must Be Cited If Subsequently Relied Upon MPEP 707.05(d) Required Rejection of Claims Must Cite Best References MPEP 707 Required Examiner Must Thoroughly Study and Investigate Patent Applications MPEP 707 Required Examiner Must Thoroughly Study and Investigate Prior Art During Reexamination MPEP 707 Required Comprehensive Examination Required for Patentability and Compliance MPEP 707 Required International-Type Search Required for National Applications Filed After June 1, 1978 MPEP 707 Required Request for International-Type Search Report at National Examination MPEP 707 Permitted No Formal Search Report Required for Fee Refund in Later Filed International Application MPEP 707 Required Complete Examiner Action Required Except for Specific Issues MPEP 707 Other Related FAQs 5 FAQs Collapse What is the PTO-892 form and when is it used? What is the significance of an examiner initialing a PTO/SB/08 form? What is the significance of 35 U.S.C. 301 in citing prior art? How should examiners address asserted advantages claimed by applicants? What should examiners do when indicating allowabl...