MPEP § 901.04 — U.S. Patents (Annotated Rules)
§901.04 U.S. Patents
This page consolidates and annotates all enforceable requirements under MPEP § 901.04, 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.
U.S. Patents
This section addresses U.S. Patents. Primary authority: 35 U.S.C. 102(e), 35 U.S.C. 102(a)(2), and 35 U.S.C. 307. Contains: 1 requirement, 1 guidance statement, and 12 other statements.
Key Rules
Sequence Listing Format
X-Series. These are the approximately 10,000 patents issued between 1790 and July 4, 1836. They were not originally numbered, but have since been assigned numbers in the sequence in which they were issued. The number should not be cited. When copies are ordered, the patentee’s name and date of issue suffice for identification.
X-Series. These are the approximately 10,000 patents issued between 1790 and July 4, 1836. They were not originally numbered, but have since been assigned numbers in the sequence in which they were issued. The number should not be cited. When copies are ordered, the patentee’s name and date of issue suffice for identification.
X-Series. These are the approximately 10,000 patents issued between 1790 and July 4, 1836. They were not originally numbered, but have since been assigned numbers in the sequence in which they were issued. The number should not be cited. When copies are ordered, the patentee’s name and date of issue suffice for identification.
X-Series. These are the approximately 10,000 patents issued between 1790 and July 4, 1836. They were not originally numbered, but have since been assigned numbers in the sequence in which they were issued. The number should not be cited. When copies are ordered, the patentee’s name and date of issue suffice for identification.
Reexamination Certificate
Reexamination Certificates. A reexamination proceeding is concluded by the issuance and publication of a reexamination certificate, which indicates all changes to the specification, including the claims, and drawings. Any changes made during the reexamination proceeding may not enlarge the scope of the claims or introduce new matter. Upon publication of the reexamination certificate, all changes are incorporated into the patent. Accordingly, the prior art date for subject matter in the reexamination certificate is the same as the prior art date for the patent that was reexamined. See 35 U.S.C. 307 and pre-AIA 35 U.S.C. 316.
Reexamination Certificates. A reexamination proceeding is concluded by the issuance and publication of a reexamination certificate, which indicates all changes to the specification, including the claims, and drawings. Any changes made during the reexamination proceeding may not enlarge the scope of the claims or introduce new matter. Upon publication of the reexamination certificate, all changes are incorporated into the patent. Accordingly, the prior art date for subject matter in the reexamination certificate is the same as the prior art date for the patent that was reexamined. See 35 U.S.C. 307 and pre-AIA 35 U.S.C. 316.
Reexamination Certificates. A reexamination proceeding is concluded by the issuance and publication of a reexamination certificate, which indicates all changes to the specification, including the claims, and drawings. Any changes made during the reexamination proceeding may not enlarge the scope of the claims or introduce new matter. Upon publication of the reexamination certificate, all changes are incorporated into the patent. Accordingly, the prior art date for subject matter in the reexamination certificate is the same as the prior art date for the patent that was reexamined. See 35 U.S.C. 307 and pre-AIA 35 U.S.C. 316.
Reexamination Certificates. A reexamination proceeding is concluded by the issuance and publication of a reexamination certificate, which indicates all changes to the specification, including the claims, and drawings. Any changes made during the reexamination proceeding may not enlarge the scope of the claims or introduce new matter. Upon publication of the reexamination certificate, all changes are incorporated into the patent. Accordingly, the prior art date for subject matter in the reexamination certificate is the same as the prior art date for the patent that was reexamined. See 35 U.S.C. 307 and pre-AIA 35 U.S.C. 316.
AIA Effective Dates
The following different series of U.S. patents are being or in the past have been issued. The date of patenting given on the face of each copy is the publication date and is the one usually cited. The filing date, in most instances also given on the face of the patent, is ordinarily the effective date as a reference. See MPEP §§ 2127, subsection II, 2136 and 2154. The pre-AIA 35 U.S.C. 102(e) date of a U.S. patent can be an earlier effective U.S. filing date. See MPEP § 2136 et seq. The 35 U.S.C. 102(a)(2) prior art date of a U.S. patent issued from a nonprovisional application claiming the benefit of a prior domestic application or priority to a foreign filed application may be the filing date of the prior filed application. See MPEP § 2154.01(b).
The following different series of U.S. patents are being or in the past have been issued. The date of patenting given on the face of each copy is the publication date and is the one usually cited. The filing date, in most instances also given on the face of the patent, is ordinarily the effective date as a reference. See MPEP §§ 2127, subsection II, 2136 and 2154. The pre-AIA 35 U.S.C. 102(e) date of a U.S. patent can be an earlier effective U.S. filing date. See MPEP § 2136 et seq. The 35 U.S.C. 102(a)(2) prior art date of a U.S. patent issued from a nonprovisional application claiming the benefit of a prior domestic application or priority to a foreign filed application may be the filing date of the prior filed application. See MPEP § 2154.01(b).
The following different series of U.S. patents are being or in the past have been issued. The date of patenting given on the face of each copy is the publication date and is the one usually cited. The filing date, in most instances also given on the face of the patent, is ordinarily the effective date as a reference. See MPEP §§ 2127, subsection II, 2136 and 2154. The pre-AIA 35 U.S.C. 102(e) date of a U.S. patent can be an earlier effective U.S. filing date. See MPEP § 2136 et seq. The 35 U.S.C. 102(a)(2) prior art date of a U.S. patent issued from a nonprovisional application claiming the benefit of a prior domestic application or priority to a foreign filed application may be the filing date of the prior filed application. See MPEP § 2154.01(b).
Reissue Patent Practice
Reissue Series. Reissue patents (see MPEP § 1401) have been given a separate series of numbers preceded by “Re.” In citing, the letters and the number must be given, e.g., Re. 1776. The date that it is effective as a reference is the effective date of the original patent application, not the filing date of the reissue application.
Reissue Series. Reissue patents (see MPEP § 1401) have been given a separate series of numbers preceded by “Re.” In citing, the letters and the number must be given, e.g., Re. 1776. The date that it is effective as a reference is the effective date of the original patent application, not the filing date of the reissue application.
Certificates of Correction. A certificate of correction corrects errors in the patent and is considered as part of the original patent. A patent, together with its certificate of correction, will have the same prior art effect as if the original patent was issued in the corrected form. See 35 U.S.C. 254 and 255.
Plant Patent Practice
Plant Patent Series. When the statutes were amended to provide for patenting certain types of plants (see MPEP Chapter 1600) these patents were given a separate series of numbers. In citing, the letters “P.P.” and the number must be given, e.g., P.P. 13.
Plant Patent Series. When the statutes were amended to provide for patenting certain types of plants (see MPEP Chapter 1600) these patents were given a separate series of numbers. In citing, the letters “P.P.” and the number must be given, e.g., P.P. 13.
Plant Patent Series. When the statutes were amended to provide for patenting certain types of plants (see MPEP Chapter 1600) these patents were given a separate series of numbers. In citing, the letters “P.P.” and the number must be given, e.g., P.P. 13.
AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154)
The following different series of U.S. patents are being or in the past have been issued. The date of patenting given on the face of each copy is the publication date and is the one usually cited. The filing date, in most instances also given on the face of the patent, is ordinarily the effective date as a reference. See MPEP §§ 2127, subsection II, 2136 and 2154. The pre-AIA 35 U.S.C. 102(e) date of a U.S. patent can be an earlier effective U.S. filing date. See MPEP § 2136 et seq. The 35 U.S.C. 102(a)(2) prior art date of a U.S. patent issued from a nonprovisional application claiming the benefit of a prior domestic application or priority to a foreign filed application may be the filing date of the prior filed application. See MPEP § 2154.01(b).
The following different series of U.S. patents are being or in the past have been issued. The date of patenting given on the face of each copy is the publication date and is the one usually cited. The filing date, in most instances also given on the face of the patent, is ordinarily the effective date as a reference. See MPEP §§ 2127, subsection II, 2136 and 2154. The pre-AIA 35 U.S.C. 102(e) date of a U.S. patent can be an earlier effective U.S. filing date. See MPEP § 2136 et seq. The 35 U.S.C. 102(a)(2) prior art date of a U.S. patent issued from a nonprovisional application claiming the benefit of a prior domestic application or priority to a foreign filed application may be the filing date of the prior filed application. See MPEP § 2154.01(b).
Reissue Application Filing
Reissue Series. Reissue patents (see MPEP § 1401) have been given a separate series of numbers preceded by “Re.” In citing, the letters and the number must be given, e.g., Re. 1776. The date that it is effective as a reference is the effective date of the original patent application, not the filing date of the reissue application.
Reissue Series. Reissue patents (see MPEP § 1401) have been given a separate series of numbers preceded by “Re.” In citing, the letters and the number must be given, e.g., Re. 1776. The date that it is effective as a reference is the effective date of the original patent application, not the filing date of the reissue application.
Prior Art in Reissue
Certificates of Correction. A certificate of correction corrects errors in the patent and is considered as part of the original patent. A patent, together with its certificate of correction, will have the same prior art effect as if the original patent was issued in the corrected form. See 35 U.S.C. 254 and 255.
Certificates of Correction. A certificate of correction corrects errors in the patent and is considered as part of the original patent. A patent, together with its certificate of correction, will have the same prior art effect as if the original patent was issued in the corrected form. See 35 U.S.C. 254 and 255.
Patent Expiration for Nonpayment
Derivation Certificates. At the conclusion of a derivation proceeding, if the final decision of the PTAB is adverse to claims in a patent, and the time for appeal has expired or any appeal or other review of the decision has terminated, the Office will issue and publish a derivation certificate canceling those claims of the patent. Inventorship of a patent may also be corrected via a derivation proceeding.
Derivation Certificates. At the conclusion of a derivation proceeding, if the final decision of the PTAB is adverse to claims in a patent, and the time for appeal has expired or any appeal or other review of the decision has terminated, the Office will issue and publish a derivation certificate canceling those claims of the patent. Inventorship of a patent may also be corrected via a derivation proceeding.
Ex Parte Reexamination
Reexamination Certificates. A reexamination proceeding is concluded by the issuance and publication of a reexamination certificate, which indicates all changes to the specification, including the claims, and drawings. Any changes made during the reexamination proceeding may not enlarge the scope of the claims or introduce new matter. Upon publication of the reexamination certificate, all changes are incorporated into the patent. Accordingly, the prior art date for subject matter in the reexamination certificate is the same as the prior art date for the patent that was reexamined. See 35 U.S.C. 307 and pre-AIA 35 U.S.C. 316.
Derivation Proceedings (AIA)
Derivation Certificates. At the conclusion of a derivation proceeding, if the final decision of the PTAB is adverse to claims in a patent, and the time for appeal has expired or any appeal or other review of the decision has terminated, the Office will issue and publish a derivation certificate canceling those claims of the patent. Inventorship of a patent may also be corrected via a derivation proceeding.
Citations
| Primary topic | Citation |
|---|---|
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) AIA Effective Dates | 35 U.S.C. § 102(a)(2) |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) AIA Effective Dates | 35 U.S.C. § 102(e) |
| Prior Art in Reissue Reissue Patent Practice | 35 U.S.C. § 254 |
| Ex Parte Reexamination Reexamination Certificate | 35 U.S.C. § 307 |
| Ex Parte Reexamination Reexamination Certificate | 35 U.S.C. § 316 |
| Reissue Application Filing Reissue Patent Practice | MPEP § 1401 |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) AIA Effective Dates | MPEP § 2127 |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) AIA Effective Dates | MPEP § 2136 |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) AIA Effective Dates | MPEP § 2154.01(b) |
| – | MPEP § 901.05(b) |
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 § 901.04 — U.S. Patents
Source: USPTO901.04 U.S. Patents [R-10.2019]
I. U.S. PATENT SERIESThe following different series of U.S. patents are being or in the past have been issued. The date of patenting given on the face of each copy is the publication date and is the one usually cited. The filing date, in most instances also given on the face of the patent, is ordinarily the effective date as a reference. See MPEP §§ 2127, subsection II, 2136 and 2154. The pre-AIA 35 U.S.C. 102(e) date of a U.S. patent can be an earlier effective U.S. filing date. See MPEP § 2136 et seq. The 35 U.S.C. 102(a)(2) prior art date of a U.S. patent issued from a nonprovisional application claiming the benefit of a prior domestic application or priority to a foreign filed application may be the filing date of the prior filed application. See MPEP § 2154.01(b).
X-Series. These are the approximately 10,000 patents issued between 1790 and July 4, 1836. They were not originally numbered, but have since been assigned numbers in the sequence in which they were issued. The number should not be cited. When copies are ordered, the patentee’s name and date of issue suffice for identification.
1836 Series. The mechanical, electrical, and chemical patents issued since 1836 and frequently designated as “utility” patents are included in this series. A citation by number only is understood to refer to this series. This series comprises the bulk of all U.S. patents issued. Some U.S. patents issued in 1861 bear two numbers but only the larger number should be cited.
Reissue Series. Reissue patents (see MPEP § 1401) have been given a separate series of numbers preceded by “Re.” In citing, the letters and the number must be given, e.g., Re. 1776. The date that it is effective as a reference is the effective date of the original patent application, not the filing date of the reissue application.
Design reissue patents are numbered with the same number series as “utility” reissue patents. The letter prefix does, however, indicate them to be design reissues.
A.I. Series. From 1838 to 1861, patents covering an inventor’s improvement on their own patented device were given a separate series of numbers preceded by “A.I.” to indicate Additional Improvement. In citing, the letters and the number must be given, e.g., A.I. 113. About 300 such patents were issued.
Plant Patent Series. When the statutes were amended to provide for patenting certain types of plants (see MPEP Chapter 1600) these patents were given a separate series of numbers. In citing, the letters “P.P.” and the number must be given, e.g., P.P. 13.
Design Patents. Patents for designs (see MPEP Chapter 1500) are issued under a separate series of numbers preceded by “D.” In citing, the letter “D” and the number must be given, e.g., D. 140,000.
II. CERTIFICATES AFTER THE ISSUANCE OF A U.S. PATENTFollowing the issuance of a U.S. patent, the patent may be amended through a variety of Office proceedings. Each of these proceedings concludes with the issuance of a certificate which identifies the manner in which the patent was amended.
Reexamination Certificates. A reexamination proceeding is concluded by the issuance and publication of a reexamination certificate, which indicates all changes to the specification, including the claims, and drawings. Any changes made during the reexamination proceeding may not enlarge the scope of the claims or introduce new matter. Upon publication of the reexamination certificate, all changes are incorporated into the patent. Accordingly, the prior art date for subject matter in the reexamination certificate is the same as the prior art date for the patent that was reexamined. See 35 U.S.C. 307 and pre-AIA 35 U.S.C. 316.
Certificates of Correction. A certificate of correction corrects errors in the patent and is considered as part of the original patent. A patent, together with its certificate of correction, will have the same prior art effect as if the original patent was issued in the corrected form. See 35 U.S.C. 254 and 255.
Post-Grant Review Certificates. Once the Patent Trial and Appeal Board (PTAB) issues a final decision on post grant review proceeding and the time for appeal has expired or any appeal has terminated, the Office will issue and publish a post grant review certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any new or amended claim determined to be patentable.
Inter Partes Review Certificates. Once the PTAB issues a final decision in an Inter Partes Review proceeding and the time for appeal has expired or any appeal has terminated, the Office will issue and publish an inter partes review certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any new or amended claim determined to be patentable.
Derivation Certificates. At the conclusion of a derivation proceeding, if the final decision of the PTAB is adverse to claims in a patent, and the time for appeal has expired or any appeal or other review of the decision has terminated, the Office will issue and publish a derivation certificate canceling those claims of the patent. Inventorship of a patent may also be corrected via a derivation proceeding.
III. NUMBERS FOR IDENTIFICATION OF BIBLIOGRAPHIC DATA ON THE FIRST PAGE OF PATENT AND LIKE DOCUMENTS (INID NUMBERS)The purpose of INID Codes (“INID” is an acronym for “Internationally agreed Numbers for the Identification of (bibliographic) Data”) is to provide a means whereby the various data appearing on the first page of patent and like documents can be identified without knowledge of the language used and the laws applied. They are now used by most patent offices and have been applied to U.S. patents since August 4, 1970. Some of the codes are not pertinent to the documents of a particular country and some which are may, in fact, not be used. For a list of INID Codes, see MPEP § 901.05(b).