MPEP § 707.05(a) — Copies of Cited References (Annotated Rules)
§707.05(a) Copies of Cited References
This page consolidates and annotates all enforceable requirements under MPEP § 707.05(a), 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.
Copies of Cited References
This section addresses Copies of Cited References. Contains: 1 requirement, 3 guidance statements, and 3 other statements.
Key Rules
Access to Patent Application Files (MPEP 101-106)
To assist in providing copies of, or access to, references, the examiner should:
- (A) Type the citation of the references on form PTO-892, “Notice of References Cited” using Official Correspondence;
- (B) Include, in the action folder all of the references cited by the examiner which are to be furnished to the applicant.
- (C) After any necessary review has taken place, forward the action to the TC mailbox for counting. Any application which is submitted without all of the required references will be returned to the examiner. The missing reference(s) should be obtained and the file returned to the technical support staff as quickly as possible.
To assist in providing copies of, or access to, references, the examiner should:
…
(B) Include, in the action folder all of the references cited by the examiner which are to be furnished to the applicant.
To assist in providing copies of, or access to, references, the examiner should:
…
(C) After any necessary review has taken place, forward the action to the TC mailbox for counting.
To assist in providing copies of, or access to, references, the examiner should:
…
Any application which is submitted without all of the required references will be returned to the examiner.
To assist in providing copies of, or access to, references, the examiner should:
…
The missing reference(s) should be obtained and the file returned to the technical support staff as quickly as possible.
Citation of References (MPEP 707.05)
Copies of references cited by applicant in accordance with MPEP §§ 609, 707.05(b) and 708.02 are not furnished to applicant with the Office action. Additionally, copies of references cited in continuation applications if they had been previously cited in the parent application are not furnished. The examiner should check the left hand column of form PTO-892 if a copy of the reference is not to be furnished to the applicant.
PTO-892 Notice of References Cited
Copies of references cited by applicant in accordance with MPEP §§ 609, 707.05(b) and 708.02 are not furnished to applicant with the Office action. Additionally, copies of references cited in continuation applications if they had been previously cited in the parent application are not furnished. The examiner should check the left hand column of form PTO-892 if a copy of the reference is not to be furnished to the applicant.
Content of Patent Application Publication
2. This form paragraph should be followed by a citation to a U.S. patent(s) and/or a U.S. patent application publication(s).
Citations
| Primary topic | Citation |
|---|---|
| Citation of References (MPEP 707.05) PTO-892 Notice of References Cited | MPEP § 609 |
| – | MPEP § 707.05(a) |
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 § 707.05(a) — Copies of Cited References
Source: USPTO707.05(a) Copies of Cited References [R-01.2024]
Copies of cited foreign patent documents and non-patent literature references (except as noted below) are automatically furnished without charge to applicant together with the Office action in which they are cited. Copies of the cited references are also placed in the application file for use by the examiner during the prosecution. Copies of U.S. patents and U.S. patent application publications are not provided in paper to applicants and are not placed in the application file.
Copies of references cited by applicant in accordance with MPEP §§ 609, 707.05(b) and 708.02 are not furnished to applicant with the Office action. Additionally, copies of references cited in continuation applications if they had been previously cited in the parent application are not furnished. The examiner should check the left hand column of form PTO-892 if a copy of the reference is not to be furnished to the applicant.
Copies of foreign patent documents and nonpatent literature (NPL) which are cited by the examiner at the time of allowance will be furnished to applicant with the Office action and be retained in the file wrapper. This will apply to all allowance actions, including first action allowances and Ex ParteQuayle actions.
In the rare instance where no art is cited in a continuing application, all the references cited during the prosecution of the parent application will be listed at allowance for printing in the patent.
To assist in providing copies of, or access to, references, the examiner should:
- (A) Type the citation of the references on form PTO-892, “Notice of References Cited” using Official Correspondence;
- (B) Include, in the action folder all of the references cited by the examiner which are to be furnished to the applicant.
- (C) After any necessary review has taken place, forward the action to the TC mailbox for counting. Any application which is submitted without all of the required references will be returned to the examiner. The missing reference(s) should be obtained and the file returned to the technical support staff as quickly as possible.
In the case of design applications, procedures are the same as set forth in MPEP §§ 707.05(a) – 707.05(g).
¶ 7.82.03 How To Obtain Copies of U.S. Patents and U.S. Patent Application Publications
Immediately below this section is a citation to U.S. patent(s) and/or U.S. patent application publication(s).The USPTO does not provide copies of U.S. patents or U.S. patent application publications with Office actions. Reviewing the U.S. patent(s) and/or U.S. patent application publication(s) cited below is important in deciding how to respond to the Office action. To obtain copies of the cited U.S. patent(s) and/or U.S. patent application publication(s), any of the following options may be used, free of charge:
- 1) Patent Center (for all users if this application is published; for registered users associated with this application if this application has not published) — A link to Patent Center is available at www.uspto.gov/PatentCenter. To obtain the below cited U.S. patent(s) or U.S. patent application publication(s), open Patent Center. Enter the present application number (Application #) in the search box and then select the search button (magnifying glass). Once the “Application Data” is retrieved, select the “Display References” link on the left side of the screen. With the “U.S. Patent Documents” tab selected, select “View” next to the document which cites the desired U.S. patent(s) and/or U.S. patent application publication(s). Select the “PDF” link next to each desired U.S. patent and/or U.S. patent application publication to download the relevant document(s). Information on becoming a registered user can be found at www.uspto.gov/patents/apply/applying-online/getting-started-new-users. For additional information regarding Patent Center or becoming a registered user, contact the Electronic Business Center at 1-866-217-9197 (toll-free), 571-272-4100 (local), or by email at ebc@uspto.gov;
- 2) Patent Public Search tool (for all users) — A link to the
Patent Public Search tool is available at www.uspto.gov/PatentPublicSearch. To find a U.S. patent or U.S.
patent application publication, open the Basic Search feature of the Patent Public
Search tool by selecting “ Basic Search”. Type the U.S. patent or U.S. patent
application publication number in the “Quick Lookup” box without any punctuation,
letters or symbols (for example, U.S. Patent No. 10,000,000 should be entered as
10000000). Perform any of the below additional formatting may apply:
- i) for U.S. utility patents with a patent number less than one million, add any leading zero(s) before the patent number necessary to make 7 total digits (for example, U.S. Patent No. 123,456 should be entered as 0123456);
- ii) for U.S. utility and plant patent application publications, make sure to add any leading zero(s) necessary after the year so that the full 11 total digits of the application publication number are provided (for example, U.S. Publ. No. 2021/0123456 should be entered as 20210123456);
- iii) for U.S. design patents with a patent number greater than or equal to one hundred thousand, type the letter “D” in front of the patent number with no space in between (for example, U.S. Design Patent No. 123,456 should be entered as D123456); and for U.S. design patents with a patent number less than one hundred thousand, type the letter “D” followed immediately, without a space, by the patent number with any leading zero(s) necessary to make 6 total digits (for example, U.S. Design Patent No. 12,345 should be entered as D012345);
- iv) for U.S. reissue patents, type the letters “RE” followed immediately, without a space, by the patent number with any leading zeros to make 5 total digits (for example, U.S. Reissue Patent No. 1,234 should be entered as RE01234); and
- v) for U.S. plant patents, type the letters “PP” followed immediately, with a space, by the patent number with any leading zeros to make 5 total digits (for example, U.S. Plant Patent No. 1,234 should be entered as PP01234).
Then select the “Search” button in the “Quick lookup” box. The U.S. patent or U.S. patent application publication will be listed in the “Search results” field at the bottom of the screen. Select the “PDF” link to download the relevant document. For questions regarding Patent Public Search, please contact the Public Search Facility at 571-272-3275 or psf@uspto.gov.
- 3) Patent and Trademark Resource Center (PTRC) (for all users) — PTRCs are libraries located throughout the U.S. that provide specialized resources regarding patents and trademarks to the public. Information about PTRCs may be found at www.uspto.gov/PTRC; or
- 4) commercial sources.
Copies of the U.S patent(s) and/or U.S. patent application publication(s) cited below may also be purchased for a fee preferably from the Patent and Trademark Copy Fulfillment Branch’s Certified Copy Center storefront at https://certifiedcopycenter.uspto.gov or by written request to Mail Stop Patent and Trademark Copy Fulfillment Branch, Director of the U.S. Patent & Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. For information regarding purchasing copies of U.S. patents and U.S. patent application publications, contact the Patent and Trademark Copy Fulfillment Branch at 1-800-972-6382 (toll free), 571-272-3150 (local), or by email at dsd@uspto.gov.
Some of the above options will cause U.S. patent(s) and/or U.S. patent application publication(s) to be downloaded in Portable Document Format (PDF). The downloaded documents can be viewed and printed using most commercially available web browsers. Free PDF viewers are additionally available through online sources, such as Adobe Systems Incorporated at www.adobe.com/acrobat/pdf-reader.html.
For additional information or questions, contact the Pro Se Assistance Center at 1-866-767-3848 or by email at ProSeAssistanceCenter@uspto.gov or the Inventors Assistance Center at 1-800-786-9199 (toll free), 571-272-1000 (local), or 1-800-877-8339 (TDD/TTY).
Examiner Note:
- 1. This form paragraph is recommended for use in Office actions citing U.S. patent(s) or U.S. patent application publication(s) when the applicant is not represented by a registered patent attorney or a registered patent agent.
- 2. This form paragraph should be followed by a citation to a U.S. patent(s) and/or a U.S. patent application publication(s).
