Discovery by the examiner

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The Manual of Patent Examining Procedure (M.P.E.P.), 4th Edition now has a chapter 2100 on patentability. At present this chapter only contains sections dealing with Patentable Subject Matter - Microorganisms and the Statutory Bars of Public Use and On Sale (35 U.S.C. 102(b), but it is the intent of the Patent and Trademark Office to expand its content as future revisions of the M.P.E.P. are issued. The requirement for information provisions of chapter 2100 - if they are upheld on judicial review - portend a significant change in the relationship of the examiner and the applicant in ex parte prosecution. ... continued below

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Pages: 24

Creation Information

Walterscheid, E.C. January 1, 1981.

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Description

The Manual of Patent Examining Procedure (M.P.E.P.), 4th Edition now has a chapter 2100 on patentability. At present this chapter only contains sections dealing with Patentable Subject Matter - Microorganisms and the Statutory Bars of Public Use and On Sale (35 U.S.C. 102(b), but it is the intent of the Patent and Trademark Office to expand its content as future revisions of the M.P.E.P. are issued. The requirement for information provisions of chapter 2100 - if they are upheld on judicial review - portend a significant change in the relationship of the examiner and the applicant in ex parte prosecution. In view of the fact that the Office positions which appear to herald this change have been adopted without public review or comment, it is imperative that members of the patent bar review them critically and express their concerns to the Office. Simply put, although the M.P.E.P. carefully avoids any use of the term, the Office in chapter 2100 is indicating that an examiner has a right of discovery in ex parte prosecution. Accordingly, the purpose of this article is to discuss the extent to which the Office is attempting to sanction discovery by examiners. In particular, it will explore certain of the ramifications of the requirement for information provisions of chapter 2100. It will begin by outlining the requirements for information in ex parte prosecution which are expressly permitted by the rules of practice. It will then review the authority for discovery requirements in ex parte prosecution and consider the sanction for failure to meet such a requirement. Some consideration will then be given to the extent and effect of a requirement for information presented under the aegis of chapter 2100. The potential for Office discovery in the prosecution of reissue applications will be briefly examined. Finally, the failure of the Office to seek public review or comment in presenting the requirement for information provisions of chapter 2100 will be briefly discussed.

Physical Description

Pages: 24

Notes

NTIS, PC A02/MF A01.

Source

  • 5. annual patent conference of the Bureau of National Affairs, Inc., Arlington, VA, USA, 9 Sep 1981

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  • Other: DE81028733
  • Report No.: LA-UR-81-2369
  • Report No.: CONF-810936-1
  • Grant Number: W-7405-ENG-36
  • Office of Scientific & Technical Information Report Number: 6180677
  • Archival Resource Key: ark:/67531/metadc1112438

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Office of Scientific & Technical Information Technical Reports

Reports, articles and other documents harvested from the Office of Scientific and Technical Information.

Office of Scientific and Technical Information (OSTI) is the Department of Energy (DOE) office that collects, preserves, and disseminates DOE-sponsored research and development (R&D) results that are the outcomes of R&D projects or other funded activities at DOE labs and facilities nationwide and grantees at universities and other institutions.

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Creation Date

  • January 1, 1981

Added to The UNT Digital Library

  • Feb. 22, 2018, 7:45 p.m.

Description Last Updated

  • March 23, 2018, 1:30 p.m.

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Walterscheid, E.C. Discovery by the examiner, article, January 1, 1981; United States. (digital.library.unt.edu/ark:/67531/metadc1112438/: accessed May 25, 2018), University of North Texas Libraries, Digital Library, digital.library.unt.edu; crediting UNT Libraries Government Documents Department.