What are the requirements for citing prior art in a patent examiner’s office action?

What are the requirements for citing prior art in a patent examiner’s office action?

When citing prior art in an office action, patent examiners must follow specific requirements to ensure clarity and completeness. According to MPEP 707.05, examiners should:

  • Cite domestic and foreign patents by document number, kind code, and date
  • Include the name of the patentee for domestic patents
  • Cite non-patent literature with sufficient detail for identification
  • Indicate relevant pages, sections, or lines where the specific pertinent subject matter may be found

The MPEP states: ‘In citing references, the examiner should remember that breath is not necessarily a virtue in a reference citation, and that brievity and pointedness are important.’ This approach helps applicants quickly locate and understand the relevance of cited prior art to their application.

To learn more:

Tags: office action, patent examination, USPTO Guidelines