MPEP § 719.05 — Field of Search (Annotated Rules)

§719.05 Field of Search

USPTO MPEP version: BlueIron's Update: 2025-12-31

This page consolidates and annotates all enforceable requirements under MPEP § 719.05, 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.

Field of Search

This section addresses Field of Search. Contains: 17 requirements, 1 prohibition, 2 guidance statements, 1 permission, and 2 other statements.

Key Rules

Topic

Sequence Listing Format

11 rules
MPEP GuidanceRequiredAlways
[mpep-719-05-ffaf03e08c194e8dc850d515]
STIC Provides NPL and Foreign Patent Searches Upon Request
Note:
Examiners must request non-patent literature and foreign patent searches from the Scientific and Technical Information Center (STIC) through the Electronic Information Center (EIC) located in each Technology Center.

The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
(D) Searches performed by the Scientific and Technical Information Center (STIC). The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL webpage. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.

Jump to MPEP SourceSequence Listing FormatSequence Listing RequirementsAccess to Patent Application Files (MPEP 101-106)
MPEP GuidanceRequiredAlways
[mpep-719-05-0b35b5c0f05a0f2b17837e5e]
STIC Staff Use Commercial Databases for Various Searches
Note:
Examiners must request STIC staff to perform text, chemical structure, sequence, litigation, and inventor searches using commercially available databases.

The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
(D) Searches performed by the Scientific and Technical Information Center (STIC). The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL webpage. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.

Jump to MPEP SourceSequence Listing FormatSequence Listing RequirementsAccess to Patent Application Files (MPEP 101-106)
MPEP GuidanceRequiredAlways
[mpep-719-05-b9bb01a9ca0487a32c8da8e5]
Examiner Must Submit Search Request Form Via STIC NPL Webpage
Note:
Examiners are required to fill out and submit a search request form via the STIC NPL webpage to ensure that searches meet their needs.

The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
(D) Searches performed by the Scientific and Technical Information Center (STIC). The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL webpage. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.

Jump to MPEP SourceSequence Listing FormatSequence Listing RequirementsAccess to Patent Application Files (MPEP 101-106)
MPEP GuidanceRequiredAlways
[mpep-719-05-44ec40790a06c0cac0e44e94]
Examiner Must Complete Search Request Form
Note:
Examiners are required to fill out the search request form completely or discuss their search needs with EIC staff to ensure thorough searches.

The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
(D) Searches performed by the Scientific and Technical Information Center (STIC). The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL webpage. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.

Jump to MPEP SourceSequence Listing FormatSequence Listing RequirementsAccess to Patent Application Files (MPEP 101-106)
MPEP GuidanceRequiredAlways
[mpep-719-05-234de624f4e240ae47e1110a]
Examiner Must Provide Full Text of Citations Upon Request
Note:
The examiner is required to provide the full text of any citations included in search results when requested by the examiner.

The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
(D) Searches performed by the Scientific and Technical Information Center (STIC). The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL webpage. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.

Jump to MPEP SourceSequence Listing FormatSequence Listing RequirementsAccess to Patent Application Files (MPEP 101-106)
MPEP GuidanceRequiredAlways
[mpep-719-05-8316bffec6618cb1e613b5c9]
Complete Search History Required for EIC Searches
Note:
Examiners must include a complete search history in the application file when using EIC services provided by STIC.

The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
(D) Searches performed by the Scientific and Technical Information Center (STIC). The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL webpage. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.

Jump to MPEP SourceSequence Listing FormatSequence Listing RequirementsAccess to Patent Application Files (MPEP 101-106)
MPEP GuidanceRequiredAlways
[mpep-719-05-eaef11d280de8358869de8d1]
Complete Search History Must Be Included In Application File
Note:
The complete search history in the form of a printout must be included with the application file.

The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
(D) Searches performed by the Scientific and Technical Information Center (STIC). The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL webpage. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.

Jump to MPEP SourceSequence Listing FormatSequence Listing RequirementsAccess to Patent Application Files (MPEP 101-106)
MPEP GuidanceRequiredAlways
[mpep-719-05-61bcafb81b018bb7909c959b]
Search History Must Be Recorded
Note:
Examiners must record the search history in the 'SEARCH NOTES' box, including the date and initials.

The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
(D) Searches performed by the Scientific and Technical Information Center (STIC). The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL webpage. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.

Jump to MPEP SourceSequence Listing FormatSequence Listing RequirementsAccess to Patent Application Files (MPEP 101-106)
MPEP GuidancePermittedAlways
[mpep-719-05-715effdcbc79ffa6d8f76e25]
Examiners Can Use EIC for NPL Searches
Note:
Examiners can seek assistance from EIC search staff to conduct their own searches of non-patent literature databases.

The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
(D) Searches performed by the Scientific and Technical Information Center (STIC). The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL webpage. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.

Jump to MPEP SourceSequence Listing FormatSequence Listing RequirementsAccess to Patent Application Files (MPEP 101-106)
MPEP GuidanceRequiredAlways
[mpep-719-05-6d57158477ace42338f763cb]
Search History Must Include Minimum Information
Note:
A complete search history must be included in the application file, detailing the search logic, files searched, date of search, and examiner who performed it.
Any time that a limited electronic search was performed (e.g., limited classified search or text search), a complete search history in the form of a printout must be included in the application file. The search history must include the following minimum information:
  • (A) all the search logic or chemical structure or sequence(s) used as a database query;
  • (B) all the name(s) of the file(s) searched and the database service;
  • (C) the date the search was made or updated; and
  • (D) an indication of the examiner who performed the search (e.g. a user ID or the examiner’s initials).
Jump to MPEP SourceSequence Listing FormatSequence Listing RequirementsAccess to Patent Application Files (MPEP 101-106)
MPEP GuidancePermittedAlways
[mpep-719-05-b1c6594cbc9a7ce1a36013ca]
Search Commands Must Be Displayed for Structure or Sequence Queries
Note:
The rule requires that the search commands used for structure or sequence queries be displayed as a printout of the queried structure or sequence.

Search Logic – Generally, a display of the search commands executed by the search software. For a structure or sequence search, this can be a printout of the structure or sequence used to query the system.

Jump to MPEP SourceSequence Listing FormatSequence Listing Requirements
Topic

Secrecy Orders

7 rules
MPEP GuidanceInformativeAlways
[mpep-719-05-3adf1b80bc314c8d4b2106d4]
Search Notes Must Indicate Limited Search for Specific CPC Symbols
Note:
The SEARCH NOTES box must indicate how the search was limited to specific CPC symbols, and a complete search history printout must be included if an electronic search is performed.

For example, in the sample “Search Notes” form reproduced below, the “SEARCH NOTES” box indicates how the Search was limited for documents classified under CPC symbols D03D 1/0005 and B02C 19/0081. The absence of entries in the “SEARCH NOTES” box for the other classification symbols searched indicates that all documents having those symbols were reviewed or there is a search history printout in the file indicating how the search of those symbols was limited. As provided in subsection II.B below, a complete search history in the form of a printout must be included in the application file any time a limited electronic search was performed.

Jump to MPEP SourceSecrecy OrdersAccess to Patent Application Files (MPEP 101-106)
MPEP GuidancePermittedAlways
[mpep-719-05-f42dab7a2f8a3c23fa9476f4]
Classification Search Must Record Limitations
Note:
Examiners must record the classification symbol and search date in the ‘SEARCHED’ box, and document any search limitations in the ‘SEARCH NOTES’ form.

A classification search is defined as a search of the documents in a particular classification location, whether classified by CPC or USPC, and may be limited by a text query, filters or other means. When a classification search is performed, the classification symbol must be recorded in the appropriate “SEARCHED” box section of the “Search Notes” form along with the date that the search was performed (or updated) and the examiner’s initials. When a classification search is limited, the examiner must ensure that how the search was limited is made of record. In most situations, how the search was limited would be apparent in a search history printout and in these situations, the examiner should include the printout with the “Search Notes” form when making the "Search Notes" of record. When the search is limited by an approach not apparent in the search history printout, the manner in which the classification search was limited should be made of record by annotating the “SEARCH NOTES” box. Unless a search of all of the documents for a particular classification location was performed, it would be inaccurate to merely record the classification symbol in the “SEARCHED” box without including the search history printout or indicating how the search was limited in the “SEARCH NOTES” box.

Jump to MPEP SourceSecrecy Orders
MPEP GuidanceRequiredAlways
[mpep-719-05-3e089e27c5db91876678fb1e]
Classification Search Must Be Recorded
Note:
Examiners must record the classification symbol, search date, and initials when performing a classification search.

A classification search is defined as a search of the documents in a particular classification location, whether classified by CPC or USPC, and may be limited by a text query, filters or other means. When a classification search is performed, the classification symbol must be recorded in the appropriate “SEARCHED” box section of the “Search Notes” form along with the date that the search was performed (or updated) and the examiner’s initials. When a classification search is limited, the examiner must ensure that how the search was limited is made of record. In most situations, how the search was limited would be apparent in a search history printout and in these situations, the examiner should include the printout with the “Search Notes” form when making the "Search Notes" of record. When the search is limited by an approach not apparent in the search history printout, the manner in which the classification search was limited should be made of record by annotating the “SEARCH NOTES” box. Unless a search of all of the documents for a particular classification location was performed, it would be inaccurate to merely record the classification symbol in the “SEARCHED” box without including the search history printout or indicating how the search was limited in the “SEARCH NOTES” box.

Jump to MPEP SourceSecrecy Orders
MPEP GuidanceRequiredAlways
[mpep-719-05-5b001ac37ed9e9d3f0867c7c]
Classification Search Limitations Must Be Recorded
Note:
Examiners must document how a classification search was limited in the 'SEARCH NOTES' form.

A classification search is defined as a search of the documents in a particular classification location, whether classified by CPC or USPC, and may be limited by a text query, filters or other means. When a classification search is performed, the classification symbol must be recorded in the appropriate “SEARCHED” box section of the “Search Notes” form along with the date that the search was performed (or updated) and the examiner’s initials. When a classification search is limited, the examiner must ensure that how the search was limited is made of record. In most situations, how the search was limited would be apparent in a search history printout and in these situations, the examiner should include the printout with the “Search Notes” form when making the "Search Notes" of record. When the search is limited by an approach not apparent in the search history printout, the manner in which the classification search was limited should be made of record by annotating the “SEARCH NOTES” box. Unless a search of all of the documents for a particular classification location was performed, it would be inaccurate to merely record the classification symbol in the “SEARCHED” box without including the search history printout or indicating how the search was limited in the “SEARCH NOTES” box.

Jump to MPEP SourceSecrecy Orders
MPEP GuidanceRecommendedAlways
[mpep-719-05-6e73582ed16ed0c0eb64b408]
Search Limitations Must Be Documented
Note:
Examiners must record how a classification search was limited, either by including a search history printout or annotating the 'SEARCH NOTES' box.

A classification search is defined as a search of the documents in a particular classification location, whether classified by CPC or USPC, and may be limited by a text query, filters or other means. When a classification search is performed, the classification symbol must be recorded in the appropriate “SEARCHED” box section of the “Search Notes” form along with the date that the search was performed (or updated) and the examiner’s initials. When a classification search is limited, the examiner must ensure that how the search was limited is made of record. In most situations, how the search was limited would be apparent in a search history printout and in these situations, the examiner should include the printout with the “Search Notes” form when making the "Search Notes" of record. When the search is limited by an approach not apparent in the search history printout, the manner in which the classification search was limited should be made of record by annotating the “SEARCH NOTES” box. Unless a search of all of the documents for a particular classification location was performed, it would be inaccurate to merely record the classification symbol in the “SEARCHED” box without including the search history printout or indicating how the search was limited in the “SEARCH NOTES” box.

Jump to MPEP SourceSecrecy Orders
MPEP GuidanceRecommendedAlways
[mpep-719-05-4ebcd4845ba4359f57323e2d]
Search Limitation Must Be Recorded
Note:
When a classification search is limited by an approach not shown in the search history, it must be documented in the 'SEARCH NOTES' box.

A classification search is defined as a search of the documents in a particular classification location, whether classified by CPC or USPC, and may be limited by a text query, filters or other means. When a classification search is performed, the classification symbol must be recorded in the appropriate “SEARCHED” box section of the “Search Notes” form along with the date that the search was performed (or updated) and the examiner’s initials. When a classification search is limited, the examiner must ensure that how the search was limited is made of record. In most situations, how the search was limited would be apparent in a search history printout and in these situations, the examiner should include the printout with the “Search Notes” form when making the "Search Notes" of record. When the search is limited by an approach not apparent in the search history printout, the manner in which the classification search was limited should be made of record by annotating the “SEARCH NOTES” box. Unless a search of all of the documents for a particular classification location was performed, it would be inaccurate to merely record the classification symbol in the “SEARCHED” box without including the search history printout or indicating how the search was limited in the “SEARCH NOTES” box.

Jump to MPEP SourceSecrecy Orders
MPEP GuidanceInformativeAlways
[mpep-719-05-0679542c735dd6a3f92d33f7]
Search Notes Must Include Search History or Limitation Details
Note:
Examiners must record the search history printout or detail how a classification search was limited in the 'SEARCH NOTES' box unless all documents for a particular location were searched.

A classification search is defined as a search of the documents in a particular classification location, whether classified by CPC or USPC, and may be limited by a text query, filters or other means. When a classification search is performed, the classification symbol must be recorded in the appropriate “SEARCHED” box section of the “Search Notes” form along with the date that the search was performed (or updated) and the examiner’s initials. When a classification search is limited, the examiner must ensure that how the search was limited is made of record. In most situations, how the search was limited would be apparent in a search history printout and in these situations, the examiner should include the printout with the “Search Notes” form when making the "Search Notes" of record. When the search is limited by an approach not apparent in the search history printout, the manner in which the classification search was limited should be made of record by annotating the “SEARCH NOTES” box. Unless a search of all of the documents for a particular classification location was performed, it would be inaccurate to merely record the classification symbol in the “SEARCHED” box without including the search history printout or indicating how the search was limited in the “SEARCH NOTES” box.

Jump to MPEP SourceSecrecy Orders
Topic

Sequence Listing Content

5 rules
MPEP GuidanceRequiredAlways
[mpep-719-05-5f7f2d3cb19864d8a622cc05]
Printout Requirement for Sequence Searches
Note:
Nucleotide and peptide sequence searches must be documented by printouts, including all information up to the ‘ALIGNMENTS’ section for each database source searched.

Regarding nucleotide and peptide sequence searches, these searches must be documented by printout(s). A copy of a printout for each database source searched must be included in the application file. Each printout must include all the information up to the “ALIGNMENTS” section.

Jump to MPEP SourceSequence Listing ContentSequence Listing FormatSequence Listing Requirements
MPEP GuidanceRequiredAlways
[mpep-719-05-4a6f786d6ce183bfed608c7a]
Printouts of Database Searches Must Be Included
Note:
Each database source searched for nucleotide and peptide sequence must provide a printout including all information up to the 'ALIGNMENTS' section, which must be included in the application file.

Regarding nucleotide and peptide sequence searches, these searches must be documented by printout(s). A copy of a printout for each database source searched must be included in the application file. Each printout must include all the information up to the “ALIGNMENTS” section.

Jump to MPEP SourceSequence Listing ContentSequence Listing FormatSequence Listing Requirements
MPEP GuidanceRequiredAlways
[mpep-719-05-09631ee61f91e4cb005fe0dd]
Printout Must Include Sequence Alignments
Note:
Each printout for nucleotide and peptide sequence searches must include all information up to the ALIGNMENTS section.

Regarding nucleotide and peptide sequence searches, these searches must be documented by printout(s). A copy of a printout for each database source searched must be included in the application file. Each printout must include all the information up to the “ALIGNMENTS” section.

Jump to MPEP SourceSequence Listing ContentSequence Listing FormatSequence Listing Requirements
MPEP GuidanceRequiredAlways
[mpep-719-05-476f278960ca77fb0e1c6c81]
Interference Search for Broadest Claim
Note:
Examiners must perform an efficient interference search based on the broadest claim's subject matter in applications ready for allowance, considering all effective filing dates.

When an application is in condition for allowance, an interference search must be made by using the most efficient and effective manner based on the claimed subject matter in the broadest claim (e.g., by performing a text search, or a classified search, or a combination of text search and classified search, of the “US-PGPUB” database in PE2E-SEARCH). Examiners are reminded that some applications, such as continuation-in-part applications, may contain claims entitled to different effective filing dates (see MPEP §§ 2133.01 and 2152.01), and that each effective filing date should be considered when performing the interference search. If the application contains a claim directed to a nucleotide or peptide sequence, the examiner must submit a request to STIC to perform an interference search of the sequence.

Jump to MPEP SourceSequence Listing ContentSequence Listing FormatSequence Listing Requirements
MPEP GuidanceRequiredAlways
[mpep-719-05-667c012d9e1996edeb86e695]
Nucleotide/Peptide Sequence Must Trigger STIC Search
Note:
If an application contains claims directed to nucleotide or peptide sequences, the examiner must request a search from STIC.

When an application is in condition for allowance, an interference search must be made by using the most efficient and effective manner based on the claimed subject matter in the broadest claim (e.g., by performing a text search, or a classified search, or a combination of text search and classified search, of the “US-PGPUB” database in PE2E-SEARCH). Examiners are reminded that some applications, such as continuation-in-part applications, may contain claims entitled to different effective filing dates (see MPEP §§ 2133.01 and 2152.01), and that each effective filing date should be considered when performing the interference search. If the application contains a claim directed to a nucleotide or peptide sequence, the examiner must submit a request to STIC to perform an interference search of the sequence.

Jump to MPEP SourceSequence Listing ContentSequence Listing FormatSequence Listing Requirements
Topic

Access to Patent Application Files (MPEP 101-106)

3 rules
MPEP GuidanceRequiredAlways
[mpep-719-05-90577d2e6c979275693cf283]
Search History Must Be Included for Limited Searches
Note:
A complete search history must be included in the application file when a limited electronic search is performed.

For example, in the sample “Search Notes” form reproduced below, the “SEARCH NOTES” box indicates how the Search was limited for documents classified under CPC symbols D03D 1/0005 and B02C 19/0081. The absence of entries in the “SEARCH NOTES” box for the other classification symbols searched indicates that all documents having those symbols were reviewed or there is a search history printout in the file indicating how the search of those symbols was limited. As provided in subsection II.B below, a complete search history in the form of a printout must be included in the application file any time a limited electronic search was performed.

Jump to MPEP SourceAccess to Patent Application Files (MPEP 101-106)Secrecy Orders
MPEP GuidanceRequiredAlways
[mpep-719-05-cfa60bf4e9653a22d4f31eca]
Database Search Records Required for Interference Search
Note:
The application file must include a printout of the databases searched, queries used (if any), and the date of the interference search, but not the result printouts.

A printout of only the database(s) searched, the query(ies) used in the interference search (if any), and the date the interference search was performed must be made of record in the application file. The result printouts of the interference search must not be placed in the application file.

Jump to MPEP SourceAccess to Patent Application Files (MPEP 101-106)
MPEP GuidanceProhibitedAlways
[mpep-719-05-c03c16439ab726840b77ae57]
Interference Search Results Must Not Be Filed
Note:
The result printouts of the interference search must not be placed in the application file, only a record of the database searched and query used is required.

A printout of only the database(s) searched, the query(ies) used in the interference search (if any), and the date the interference search was performed must be made of record in the application file. The result printouts of the interference search must not be placed in the application file.

Jump to MPEP SourceAccess to Patent Application Files (MPEP 101-106)
Topic

Reissue and Reexamination

2 rules
MPEP GuidanceRequiredAlways
[mpep-719-05-048912930e50a82e4934c1ce]
Requirement for Reviewing Art Cited in Related Applications
Note:
The examiner must review art cited in related applications, including parent, continuation, and divisional applications, as required for all continuation-in-part and reissue/reexamination proceedings.

The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
(J) A review of art cited in a parent application or an original patent, as required for all continuation and continuation-in-part applications, divisional applications, reissue applications and reexamination proceedings, or a review of art cited in related applications. Examples S. N. XX/495,123 refs. checked S. N. XX/490,000 refs. checked S. N. XX/480,111 refs. checked except for Greek patent to Kam S. N. XX/410,113 refs. not checked since the file was not available

Jump to MPEP SourceReissue and ReexaminationConcurrent Reissue ProceedingsReissue Patent Practice
MPEP GuidanceRequiredAlways
[mpep-719-05-8a5e2c76b65d0a4a71febc4b]
Requirement for Reviewing Cited Art in Related Applications
Note:
Examiners must record a review of art cited in parent, original patent, continuation, continuation-in-part, divisional, reissue, and reexamination applications.
(J) A review of art cited in a parent application or an original patent, as required for all continuation and continuation-in-part applications, divisional applications, reissue applications and reexamination proceedings, or a review of art cited in related applications.
  • Record the application number of a parent application, followed by “refs. checked” or “refs. ck’ed.” If for any reason not all of the references have been checked because they are not available, such exceptions should be noted.
  • Examples S. N. XX/495,123 refs. checked S. N. XX/490,000 refs. checked S. N. XX/480,111 refs. checked except for Greek patent to Kam S. N. XX/410,113 refs. not checked since the file was not available
  • Record the patent number of a parent or related application that is now patented or of an original patent now being reissued with “refs. checked” or “refs. ck’ed.”
  • Examples Pat. 3,900,000 refs. checked Pat. 3,911,111 refs. ck’ed
Jump to MPEP SourceReissue and ReexaminationConcurrent Reissue ProceedingsReissue Patent Practice
Topic

PTAB Jurisdiction

2 rules
MPEP GuidanceRequiredAlways
[mpep-719-05-f51164859db2eff63008d7e8]
Review of Documents from Non-Similar Claims Cases Before PTAB
Note:
The examiner must review documents cited in a related trial before the Patent Trial and Appeal Board where the claims do not have similar scope or claim elements.
(K) A review of documents cited in a related trial before the Patent Trial and Appeal Board where the claims DO NOT have similar scope or similar claim elements.
  • Record the trial number, U.S. Patent on trial and date reviewed. Examples IPR2012-99999 Reviewed Inter Partes Review of U.S. Patent No. 9,999,999 on 12/31/2019 PGR2015-99999 Reviewed Post Grant Review of U.S. Patent No. 9,999,999 on 12/31/2019 CBM2016-99999 Reviewed Covered Business Method Patent Review of U.S. Patent No. 9,999,999 on 12/31/2019
Jump to MPEP SourcePTAB JurisdictionPTAB Contested Case ProceduresEx Parte Appeals to PTAB
MPEP GuidanceRequiredAlways
[mpep-719-05-b73a4fde910378f1f0110e4c]
Review of Similar Claims Before PTAB Required
Note:
The examiner must review documents cited in a related trial before the Patent Trial and Appeal Board where the claims have similar scope or elements.
(L) A review of documents cited in a related trial before the Patent Trial and Appeal Board where the claims DO HAVE similar scope or similar claim elements.
  • Record the trial number, document reviewed, U.S. Patent on trial and date reviewed. Examples IPR2012-99999 Reviewed Petition for Inter Partes Review of U.S. Patent No. 9,999,999 on 12/31/2019 PGR2015-99999 Reviewed Petition for Post Grant Review of U.S. Patent No. 9,999,999 on 12/31/2019 CBM2016-99999 Reviewed Decision Instituting Covered Business Method Patent Review of U.S. Patent No. 9,999,999 on 12/31/2019
Jump to MPEP SourcePTAB JurisdictionPTAB Contested Case ProceduresEx Parte Appeals to PTAB
Topic

Protective Orders on Files

1 rules
MPEP GuidanceRequiredAlways
[mpep-719-05-84c8db06402be8a754998e7a]
Search Notes Must Include Specific Information
Note:
Examiners must record specific types of information in the 'SEARCH NOTES' box, including annotations, text searches, and consultations with other examiners.
The examiner will record the following types of information in the "SEARCH NOTES" box and in the manner indicated, with each entry dated and initialed.
  • (A) Annotations indicating how a classification search was limited, as discussed in subsection I above.
  • (B) Text search performed in a particular database where no classification search was performed. If a text search was performed in a particular database and no classification search was performed, the following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date or dates that the search was performed (or updated) and the examiner’s initials. A search history printout must also be included in the file. See subsection II.B below.
  • (C) Searches made within the International Patent Classification System (IPC).
  • (D) Searches performed by the Scientific and Technical Information Center (STIC).
    • The staff of the STIC provide non-patent literature (NPL) and foreign patent searches to examiners on request through the Electronic Information Center (EIC) located in each Technology Center. STIC staff use commercially available databases to provide text, chemical structure, sequence, litigation, inventor, and other types of searches. To request a search, the examiner must fill out and submit a search request form via the STIC NPL webpage. It is important to provide as much relevant information as possible to assure that the search meets the examiner’s needs. Examiners are encouraged to fill out the request form completely and/or to discuss their search needs with the EIC search staff. The full text of any citations included in the search results will be provided at the examiner’s request. The search conducted by the EIC will include a complete search history. The complete search history in the form of a printout must be included in the application file. The following entry or its equivalent must be recorded in the “SEARCH NOTES” box of the “Search Notes” form: “See search history printout(s)” along with the date that the search was performed (or updated) and the examiner’s initials. EIC search staff can also assist examiners in conducting their own search of NPL databases.
  • (E) A consultation with other examiners to determine if relevant search fields exist in their areas of expertise. If the subclass is not searched, record the class and subclass, if any, discussed, followed by “(consulted).” This entry may also include the name of the examiner consulted and the art unit. Examples F16B fasteners (consulted) F16B fasteners (consulted J. Doe A.U. 3501) F16B 2/00 (consulted)
  • (F) Searches performed in electronic journals and electronic books available to examiners on their desktop through the STIC NPL website. Examiners should contact their EIC if they need assistance using these tools and creating a search history printout.
  • (G) Searches performed in other media collections or databases (e.g., CD-ROM databases, specialized databases, etc.), record data as necessary to provide unique identification of material searched and sufficient information as to the search query or request so that the search can be updated. The record should also document the location of the database and its form (CD-ROM, etc.).
    • Example: Citing a biotech CD-ROM database Entrez: Sequences, National Center for Biotechnology Information, Version 7.19.91b (CD-ROM, TC 1600) Searched HIV and vaccine; neighbored Galloway article dated 6/5/91 on April 1, 1990.
    • Example: Citing a nonbiotech CD-ROM database Computer Select, (November, 1991), Ziff Davis Communications Co., (CD-ROM, STIC), Searched Unix and emulation on December 1, 1991.
  • (H) Searches performed on the Internet.
    • For Internet search engines, such as Google ®, Yahoo ®, and Bing ®, print out the first page and any of the following pages that include names of any webpages reviewed during the search. Use the print icon on the Microsoft Internet Explorer ® toolbar or use the file-print command. Review the printout to determine if the Internet search engine name, the search logic, and the date of the search are present. If any of these are missing, write the missing information on the printout. Indicate all webpages reviewed.
  • (I) Nonelectronic searches of publications in paper form, e.g., searches of the print books or journals in an EIC. Record according to the following for each type of literature search:
    • (1) Abstracting publications, such as Chemical Abstracts, record name of publications, list terms consulted in index, and indicate period covered. Examples Chem. Abs, Palladium hydride Jan.-June 1975 Eng. Index, Data Conversion Analog to Digital 1975
    • (2) Periodicals — list by title, volume, issue, pages and date, as appropriate. Examples Popular Mechanics, June-Dec. 1974 Lubrication Engineering, vols. 20-24
    • (3) Books — list by title, author, edition or date, pages, as appropriate. Example Introduction to Hydraulic Fluids, Roger E. Hatton, 1962
    • (4) Other types of literature not specifically mentioned herein (i.e., catalogs, manufacturer’s literature, private collections, etc.).
      • Record data as necessary to provide unique identification of material searched.
      • Example Sears Roebuck catalog, Spring-Summer, 1973.
      • A cursory or browsing search through a number of materials that are not found to be of significant relevance may be indicated in a collective manner, e.g., “Browsed STIC shelves under QA 76.5” or “Browsed text books in STIC relating to………………….” More detailed reviews or searches through books and periodicals or any search of terms in abstracting publications should be specifically recorded, however.
  • (J) A review of art cited in a parent application or an original patent, as required for all continuation and continuation-in-part applications, divisional applications, reissue applications and reexamination proceedings, or a review of art cited in related applications.
    • Record the application number of a parent application, followed by “refs. checked” or “refs. ck’ed.” If for any reason not all of the references have been checked because they are not available, such exceptions should be noted.
    • Examples S. N. XX/495,123 refs. checked S. N. XX/490,000 refs. checked S. N. XX/480,111 refs. checked except for Greek patent to Kam S. N. XX/410,113 refs. not checked since the file was not available
    • Record the patent number of a parent or related application that is now patented or of an original patent now being reissued with “refs. checked” or “refs. ck’ed.”
    • Examples Pat. 3,900,000 refs. checked Pat. 3,911,111 refs. ck’ed
  • (K) A review of documents cited in a related trial before the Patent Trial and Appeal Board where the claims DO NOT have similar scope or similar claim elements.
    • Record the trial number, U.S. Patent on trial and date reviewed. Examples IPR2012-99999 Reviewed Inter Partes Review of U.S. Patent No. 9,999,999 on 12/31/2019 PGR2015-99999 Reviewed Post Grant Review of U.S. Patent No. 9,999,999 on 12/31/2019 CBM2016-99999 Reviewed Covered Business Method Patent Review of U.S. Patent No. 9,999,999 on 12/31/2019
  • (L) A review of documents cited in a related trial before the Patent Trial and Appeal Board where the claims DO HAVE similar scope or similar claim elements.
    • Record the trial number, document reviewed, U.S. Patent on trial and date reviewed. Examples IPR2012-99999 Reviewed Petition for Inter Partes Review of U.S. Patent No. 9,999,999 on 12/31/2019 PGR2015-99999 Reviewed Petition for Post Grant Review of U.S. Patent No. 9,999,999 on 12/31/2019 CBM2016-99999 Reviewed Decision Instituting Covered Business Method Patent Review of U.S. Patent No. 9,999,999 on 12/31/2019
Jump to MPEP SourceProtective Orders on FilesBroadening Reissue (Two-Year Limit)Reissue and PTAB Proceedings

Citations

Primary topicCitation
37 CFR § 1.97
Sequence Listing ContentMPEP § 2133.01
MPEP § 609
MPEP § 904

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.

BlueIron Last Updated: 2025-12-31