MPEP § 1302.01 — General Review of Disclosure (Annotated Rules)
§1302.01 General Review of Disclosure
This page consolidates and annotates all enforceable requirements under MPEP § 1302.01, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
General Review of Disclosure
This section addresses General Review of Disclosure. Primary authority: 35 U.S.C. 112(a), 37 CFR 1.121(e), and 37 CFR 1.126. Contains: 4 guidance statements and 1 permission.
Key Rules
Maintenance Fee Payment
When an application is apparently ready for allowance, it should be reviewed by the examiner to make certain that the whole application meets all formal and substantive (i.e., statutory) requirements and that the language of the claims is enabled by, and finds adequate descriptive support in, the application disclosure as originally filed. Neglect to give due attention to these matters may lead to confusion as to the scope of the patent.
When an application is apparently ready for allowance, it should be reviewed by the examiner to make certain that the whole application meets all formal and substantive (i.e., statutory) requirements and that the language of the claims is enabled by, and finds adequate descriptive support in, the application disclosure as originally filed. Neglect to give due attention to these matters may lead to confusion as to the scope of the patent.
Patent Application Content
There should be clear support or antecedent basis in the specification for the terminology used in the claims. Usually, the original claims follow the nomenclature of the specification; but sometimes in amending the claims or in adding new claims, applicant employs terms that do not appear in the specification. This may result in uncertainty as to the interpretation to be given such terms. See MPEP § 608.01(o). It should be noted, however, that exact terms need not be used in haec verba to satisfy the written description requirement of 35 U.S.C. 112(a). Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995); In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976). See also 37 CFR 1.121(e) which merely requires substantial correspondence between the language of the claims and the language of the specification.
Specification
There should be clear support or antecedent basis in the specification for the terminology used in the claims. Usually, the original claims follow the nomenclature of the specification; but sometimes in amending the claims or in adding new claims, applicant employs terms that do not appear in the specification. This may result in uncertainty as to the interpretation to be given such terms. See MPEP § 608.01(o). It should be noted, however, that exact terms need not be used in haec verba to satisfy the written description requirement of 35 U.S.C. 112(a). Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995); In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976). See also 37 CFR 1.121(e) which merely requires substantial correspondence between the language of the claims and the language of the specification.
Citations
| Primary topic | Citation |
|---|---|
| Patent Application Content Specification | 35 U.S.C. § 112(a) |
| Patent Application Content Specification | 37 CFR § 1.121(e) |
| – | 37 CFR § 1.126 |
| – | 37 CFR § 1.72 |
| – | 37 CFR § 606.01 |
| – | 37 CFR § 608.01(n) |
| – | MPEP § 1302.04 |
| – | MPEP § 606 |
| – | MPEP § 608.01(b) |
| – | MPEP § 608.01(j) |
| Patent Application Content Specification | MPEP § 608.01(o) |
| Patent Application Content Specification | Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995) |
| Patent Application Content Specification | In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 1302.01 — General Review of Disclosure
Source: USPTO1302.01 General Review of Disclosure [R-01.2024]
When an application is apparently ready for allowance, it should be reviewed by the examiner to make certain that the whole application meets all formal and substantive (i.e., statutory) requirements and that the language of the claims is enabled by, and finds adequate descriptive support in, the application disclosure as originally filed. Neglect to give due attention to these matters may lead to confusion as to the scope of the patent.
There should be clear support or antecedent basis in the specification for the terminology used in the claims. Usually, the original claims follow the nomenclature of the specification; but sometimes in amending the claims or in adding new claims, applicant employs terms that do not appear in the specification. This may result in uncertainty as to the interpretation to be given such terms. See MPEP § 608.01(o). It should be noted, however, that exact terms need not be used in haec verba to satisfy the written description requirement of 35 U.S.C. 112(a). Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995); In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976). See also 37 CFR 1.121(e) which merely requires substantial correspondence between the language of the claims and the language of the specification.
The claims should be renumbered as required by 37 CFR 1.126, and particular attention should be given to claims dependent on previous claims to see that the numbering is consistent. See MPEP § 608.01(j) and § 608.01(n).
The abstract should be checked for an adequate and clear statement of the disclosed invention. See MPEP § 608.01(b). The length of the abstract should be limited to 150 words. For changes to the abstract by examiner’s amendment, see MPEP § 1302.04.
The title should also be checked. The title may not exceed 500 characters in length and must be as short and specific as possible. See 37 CFR 1.72. The title should be descriptive of the invention claimed, even though a longer title may result. If a satisfactory title is not supplied by the applicant, the examiner may require a change to the title on or after allowance. See MPEP § 606 and § 606.01.
All amendments should be reviewed to assure that they were timely filed.