U.S. DEPARTMENT OF COMMERCE
`U.S. Patent and Trademark Office
`Washington, DC 20231
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`Eighth Edition
`
`The enclosed is the Eighth Edition to the Manual of Patent Examining Procedure. The
`Manual has been revised extensively to incorporate the changes necessitated by The
`American Inventors Protection Act of 1999 and the following final rules:
`(1) “Request for Continued Examination Practice and Changes to Provisional
`Application Practice,” which became effective on August 16, 2000;
`(2) “Changes To Implement Patent Term Adjustment Under Twenty-Year Patent
`Term,” which became effective on October 18, 2000;
`(3) “Changes To Implement the Patent Business Goals,” which became effective
`on November 7, 2000;
`(4) “Treatment of Unlocatable Patent Application and Patent Files,” which
`became effective on November 17, 2000;
`(5) “Changes to Implement Eighteen-Month Publication of Patent Applications,”
`which became effective on November 29, 2000;
`(6) “Rules to Implement Optional Inter Partes Reexamination Proceedings,”
`which became effective on February 5, 2001;
`(7) “Revision of Patent Cooperation Treaty Application Procedure,” which
`became effective on March 1, 2001; and
`(8) “Changes to the Time Period for Making Any Necessary Deposit of Biological
`Material,” which became effective on May 29, 2001.
`
`Changes are highlighted on the following pages.
`
`This Edition of the Manual was prepared with the assistance of the Senior Legal Advisors
`and Legal Advisors of the Office of Patent Legal Administration. Their efforts are greatly
`appreciated.
`
`Magdalen Y. C. Greenlief, Editor
`Manual of Patent Examining Procedure
`
` August 2001
`
`ALLSTEEL INC.
`Exhibit 1016, Page 1
`
`

`
`Chapter 100 Secrecy, Access, National Security, and Foreign
`Filing
`
`Secrecy, Access, National Security, and Foreign Filing
`
`101
`102
`103
`
`104
`105
`
`106
`106.01
`110
`
`115
`
`120
`121
`
`130
`140
`150
`151
`
`General
`Information as to Status of an Application
`Right of Public to Inspect Patent Files and Some
`Application Files
`Power to Inspect Application
`Suspended or Excluded Practitioner Cannot
`Inspect
`Control of Inspection by Assignee
`Rights of Assignee of Part Interest
`Confidential Nature of International
`Applications
`Review of Applications for National Security
`and Property Rights Issues
`Secrecy Orders
`Handling of Applications and Other Papers
`Bearing Security Markings
`Examination of Secrecy Order Cases
`Foreign Filing Licenses
`Statements to DOE and NASA
`Content of the Statements
`
`101
`
`General
`
`35 U.S.C. 122. Confidential status of applications;
`publication of patent applications.
`(a) CONFIDENTIALITY.— Except as provided in subsec-
`tion (b), applications for patents shall be kept in confidence by the
`Patent and Trademark Office and no information concerning the
`same given without authority of the applicant or owner unless
`necessary to carry out the provisions of an Act of Congress or in
`such special circumstances as may be determined by the Director.
`(b) PUBLICATION.—
`(1) IN GENERAL.—
`(A) Subject to paragraph (2), each application for a
`patent shall be published, in accordance with procedures deter-
`mined by the Director, promptly after the expiration of a period of
`18 months from the earliest filing date for which a benefit is
`sought under this title. At the request of the applicant, an applica-
`tion may be published earlier than the end of such 18-month
`period.
`
`(B) No information concerning published patent appli-
`cations shall be made available to the public except as the Director
`determines.
`(C) Notwithstanding any other provision of law, a
`determination by the Director to release or not to release informa-
`tion concerning a published patent application shall be final and
`nonreviewable.
`(2) EXCEPTIONS.—
`(A) An application shall not be published if that appli-
`cation is—
`
`(i) no longer pending;
`(ii) subject to a secrecy order under section 181 of
`
`this title;
`
`(iii) a provisional application filed under section
`111(b) of this title; or
`(iv) an application for a design patent filed under
`chapter 16 of this title.
`(B)(i)If an applicant makes a request upon filing, certi-
`fying that the invention disclosed in the application has not and
`will not be the subject of an application filed in another country,
`or under a multilateral international agreement, that requires pub-
`lication of applications 18 months after filing, the application
`shall not be published as provided in paragraph (1).
`(ii) An applicant may rescind a request made under
`clause (i) at any time.
`(iii) An applicant who has made a request under
`clause (i) but who subsequently files, in a foreign country or under
`a multilateral international agreement specified in clause (i), an
`application directed to the invention disclosed in the application
`filed in the Patent and Trademark Office, shall notify the Director
`of such filing not later than 45 days after the date of the filing of
`such foreign or international application. A failure of the applicant
`to provide such notice within the prescribed period shall result in
`the application being regarded as abandoned, unless it is shown to
`the satisfaction of the Director that the delay in submitting the
`notice was unintentional.
`(iv) If an applicant rescinds a request made under
`clause (i) or notifies the Director that an application was filed in a
`foreign country or under a multilateral international agreement
`specified in clause (i), the application shall be published in accor-
`dance with the provisions of paragraph (1) on or as soon as is
`practical after the date that is specified in clause (i).
`(v) If an applicant has filed applications in one or
`more foreign countries, directly or through a multilateral interna-
`tional agreement, and such foreign filed applications correspond-
`ing to an application filed in the Patent and Trademark Office or
`the description of the invention in such foreign filed applications
`is less extensive than the application or description of the inven-
`tion in the application filed in the Patent and Trademark Office,
`the applicant may submit a redacted copy of the application filed
`in the Patent and Trademark Office eliminating any part or
`description of the invention in such application that is not also
`contained in any of the corresponding applications filed in a for-
`eign country. The Director may only publish the redacted copy of
`the application unless the redacted copy of the application is not
`received within 16 months after the earliest effective filing date
`for which a benefit is sought under this title. The provisions of
`section 154(d) shall not apply to a claim if the description of the
`invention published in the redacted application filed under this
`clause with respect to the claim does not enable a person skilled in
`the art to make and use the subject matter of the claim.
`(c) PROTEST AND PRE-ISSUANCE OPPOSITION.—
`The Director shall establish appropriate procedures to ensure that
`no protest or other form of pre-issuance opposition to the grant of
`a patent on an application may be initiated after publication of the
`application without the express written consent of the applicant.
`(d) NATIONAL SECURITY.— No application for patent
`shall be published under subsection (b)(1) if the publication or
`disclosure of such invention would be detrimental to the national
`security. The Director shall establish appropriate procedures to
`
`100-1
`
`August 2001
`
`Exhibit 1016, Page 2
`
`

`
`101
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`ensure that such applications are promptly identified and the
`secrecy of such inventions is maintained in accordance with chap-
`ter 17 of this title.
`
`18 U.S.C. 2071. Concealment, removal, or mutilation
`generally.
`(a) Whoever willfully and unlawfully conceals, removes,
`mutilates, obliterates, or destroys, or attempts to do so, or, with
`intent to do so takes and carries away any record, proceeding,
`map, book, paper, document, or other thing, filed or deposited
`with any clerk or officer of any court of the United States, or in
`any public office, or with any judicial or public officer of the
`United States, shall be fined under this title or imprisoned not
`more than three years, or both.
`(b) Whoever, having the custody of any such record, pro-
`ceeding, map, book, document, paper, or other thing, willfully and
`unlawfully conceals, removes, mutilates, obliterates, falsifies, or
`destroys the same, shall be fined under this title or imprisoned not
`more than three years, or both; and shall forfeit his office and be
`disqualified from holding any office under the United States. As
`used in this subsection, the term “office” does not include the
`office held by any person as a retired officer of the Armed Forces
`of the United States.
`
`37 CFR 1.14. Patent applications preserved in confidence.
`(a) Confidentiality of patent application information. Patent
`applications that have not been published under 35 U.S.C. 122(b)
`are generally preserved in confidence pursuant to 35 U.S.C.
`122(a). Information concerning the filing, pendency, or subject
`matter of an application for patent, including status information,
`and access to the application, will only be given to the public as
`set forth in § 1.11 or in this section.
`(1) Status information is:
`(i) Whether the application is pending, abandoned, or
`
`patented;
`
`(ii) Whether the application has been published under
`35 U.S.C. 122(b); and
`(iii) The application “numerical identifier” which may
`
`be:
`
`(A) The eight-digit application number (the two-
`digit series code plus the six-digit serial number); or
`(B) The six-digit serial number plus any one of the
`filing date of the national application, the international filing date,
`or date of entry into the national stage.
`(2) Access is defined as providing the application file for
`review and copying of any material in the application file.
`(b) When status information may be supplied. Status infor-
`mation of an application may be supplied by the Office to the pub-
`lic if any of the following apply:
`(1) Access to the application is available pursuant to para-
`graph (e) of this section;
`(2) The application is referred to by its numerical identi-
`fier in a published patent document (e.g., a U.S. patent, a U.S.
`patent application publication, or an international application pub-
`lication), or in a U.S. application open to public inspection
`(§ 1.11(b), or paragraph (e)(2)(i) or (e)(2)(ii) of this section);
`
`(3) The application is a published international applica-
`tion in which the United States of America has been indicated as a
`designated state; or
`(4) The application claims the benefit of the filing date of
`an application for which status information may be provided pur-
`suant to paragraphs (b)(1) through (b)(3) of this section.
`(c) When copies may be supplied. A copy of an application-
`as-filed or a file wrapper and contents may be supplied by the
`Office to the public, subject to paragraph (i) of this section (which
`addresses international applications), if any of the following
`apply:
`
`(1) Application-as-filed.
`(i)
`If a U.S. patent application publication or patent
`incorporates by reference, or includes a specific reference under
`35 U.S.C. 119(e) or 120 to, a pending or abandoned application, a
`copy of that application-as-filed may be provided to any person
`upon written request including the fee set forth in § 1.19(b)(1); or
`(ii) If an international application, which designates
`the U.S. and which has been published in accordance with PCT
`Article 21(2), incorporates by reference or claims priority under
`PCT Article 8 to a pending or abandoned U.S. application, a copy
`of that application-as-filed may be provided to any person upon
`written request including a showing that the publication of the
`application in accordance with PCT Article 21(2) has occurred
`and that the U.S. was designated, and upon payment of the appro-
`priate fee set forth in § 1.19(b)(1).
`(2) File wrapper and contents. A copy of the specifica-
`tion, drawings, and all papers relating to the file of an abandoned
`or pending published application may be provided to any person
`upon written request, including the fee set forth in § 1.19(b)(2). If
`a redacted copy of the application was used for the patent applica-
`tion publication, the copy of the specification, drawings, and
`papers may be limited to a redacted copy.
`(d) Power to inspect a pending or abandoned application.
`Access to an application may be provided to any person if the
`application file is available, and the application contains written
`authority (e.g., a power to inspect) granting access to such person.
`The written authority must be signed by:
`(1) An applicant;
`(2) An attorney or agent of record;
`(3) An authorized official of an assignee of record (made
`of record pursuant to § 3.71 of this chapter); or
`(4) A registered attorney or agent named in the papers
`accompanying the application papers filed under § 1.53 or the
`national stage documents filed under § 1.494 or § 1.495, if an exe-
`cuted oath or declaration pursuant to § 1.63 or § 1.497 has not
`been filed.
`(e) Public access to a pending or abandoned application.
`Access to an application may be provided to any person, subject
`to paragraph (i) of this section, if a written request for access is
`submitted, the application file is available, and any of the follow-
`ing apply:
`(1) The application is open to public inspection pursuant
`to § 1.11(b); or
`(2) The application is abandoned, it is not within the file
`jacket of a pending application under § 1.53(d), and it is referred
`to:
`
`August 2001
`
`100-2
`
`Exhibit 1016, Page 3
`
`

`
`SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING
`
`101
`
`In a U.S. patent application publication or patent;
`(i)
`(ii) In another U.S. application which is open to public
`inspection either pursuant to § 1.11(b) or paragraph (e)(2)(i) of
`this section; or
`(iii) In an international application which designates
`the U.S. and is published in accordance with PCT Article 21(2).
`
`*****
`
`All U.S. Patent and Trademark Office employees
`are legally obligated to preserve pending applications
`for patents in confidence until they are published or
`patented. 35 U.S.C. 122 and 18 U.S.C. 2071 impose
`statutory requirements which cover the handling of
`patent applications and related documents. Suspen-
`sion, removal, and even criminal penalties may be
`imposed for violations of these statutes.
`In order to provide prompt and orderly service to
`the public, application files must be readily available
`to authorized U.S. Patent and Trademark Office
`employees at all times. Accordingly, in carrying or
`transporting applications and related papers, care
`must be exercised by U.S. Patent and Trademark
`Office employees, especially in corridors and eleva-
`tors, to ensure that applications and related papers are
`always under employee surveillance and control.
`Application files must not be displayed or handled so
`as to permit perusal or inspection by any unauthorized
`member of the public.
`Interoffice mail must be sent in appropriate enve-
`lopes.
`No part of any application or paper related thereto
`should be reproduced or copied except for official
`purposes.
`No patent application or related document may be
`removed from the premises occupied by the U.S.
`Patent and Trademark Office, except for handling as
`required by the issue process, unless specifically
`authorized by the Commissioner. If such authorization
`is given, the employee having custody will be respon-
`sible for maintaining confidentiality and otherwise
`conforming with the requirements of law.
`Applications must not be placed in desk drawers or
`other locations where they might be easily overlooked
`or are not visible to authorized personnel.
`Whenever an application is removed from the oper-
`ating area having custody of the file, a charge on the
`PALM system must be properly and promptly made.
`Papers arriving within the Technology Center (TC)
`must be properly and promptly placed within the
`appropriate files. If papers are received with faulty
`
`identifications, this should be corrected at once. If
`papers are received at a destination for which they are
`not intended due to faulty identification or routing,
`appropriate corrective action should be taken at once
`to ensure the prompt receipt thereof at destination.
`See MPEP § 508.01 and § 508.03.
`All U.S. Patent and Trademark Office employees
`should bear in mind at all times the critical impor-
`tance of ensuring the confidentiality and accessibility
`of patent application files and related documents, and
`in addition to the specific procedures referred to
`above, should take all appropriate action to that end.
`Examiners, classifiers, and other U.S. Patent and
`Trademark Office employees who assist public
`searchers by outlining or indicating a field of search,
`should also bear in mind the critical importance of
`ensuring the confidentiality of information revealed
`by a searcher when requesting field of search assis-
`tance. See MPEP § 1701. Statutory requirements and
`curbs regarding the use of information obtained by an
`employee
`through government employment are
`imposed by 15 U.S.C. 15(b) and 18 U.S.C. 1905.
`Examiners, while holding interviews with attorneys
`and applicants, should be careful to prevent exposures
`of files and drawings of other applicants.
`Extreme care should be taken to prevent inadvert-
`ent and/or inappropriate disclosure of the filing date
`or application number of any application. This applies
`not only to Office actions but also to notes (usually in
`pencil) in the file wrapper.
`
`TELEPHONE AND IN-PERSON REQUESTS
`FOR INFORMATION CONCERNING PEND-
`ING OR ABANDONED APPLICATIONS
`
`Normally no information concerning pending or
`abandoned patent applications (except applications
`which have been published, reissue applications and
`reexamination proceedings) may be given to the pub-
`lic without the authorization of the applicant, the
`assignee of record, or the attorney or agent of record.
`See 35 U.S.C. 122 and 37 CFR 1.14. Other exceptions
`are specified in 37 CFR 1.14.
`When handling an incoming telephone call or an in-
`person request for information regarding an unpub-
`lished pending or abandoned patent application, no
`information should be disclosed until the identity of
`the requester can be adequately verified as set forth
`below. Particular care must be exercised when a
`
`100-3
`
`August 2001
`
`Exhibit 1016, Page 4
`
`

`
`102
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`request is made for the publication date or publication
`number, or issue date and patent number assigned to a
`pending patent application. If the publication or issue
`date is later than the current date (i.e., the date of the
`request), such information may be given only to the
`applicant, or the assignee of record, or the attorney or
`agent of record.
`The following procedure should be followed before
`any information about an unpublished pending or
`abandoned patent application is given over the tele-
`phone:
`
`(A) Obtain the caller’s full name, the application
`number, and the caller’s telephone number. Ask the
`caller if there is an attorney or agent of record.
`(1) If there is an attorney or agent of record,
`ask for his or her registration number. If the registra-
`tion number is not known, ask for the name of the
`attorney or agent of record. Inform caller that an attor-
`ney or agent of record will be called after verification
`of his/her identity and that information concerning the
`application will be released to that attorney or agent.
`(2) If there is no attorney or agent of record,
`ask the caller why he or she is entitled to information
`concerning the application. If the caller identifies
`himself or herself as an applicant or an authorized
`representative of the assignee of record, ask for the
`correspondence address of record and inform caller
`that his or her association with the application must be
`verified before any information concerning the appli-
`cation can be released and that he or she will be called
`back. If the caller indicates that he or she is not an
`applicant or an authorized representative of the
`assignee of record then status information may only
`be given pursuant to MPEP § 102.
`(B) Verify that information concerning the appli-
`cation can be released by checking PALM or the
`application file.
`(1) If the caller stated there was an attorney or
`agent of record, PALM Intranet or the 2954 PALM
`screen should be used to verify the registration num-
`ber given or to obtain the registration number of an
`attorney or agent of record. Then PALM Intranet or
`the 3552 PALM screen (using the registration num-
`ber) should be used to obtain a telephone number for
`an attorney or agent of record.
`(2) If the caller identified himself or herself as
`an applicant or an authorized representative of the
`assignee of record, PALM Intranet or the 2950 PALM
`
`screen should be used to verify the correspondence
`address of record. PALM Intranet or the 2954 PALM
`screen should be used to determine if there is an attor-
`ney or agent of record. If there is an attorney or agent
`of record, their telephone number can be obtained
`from PALM Intranet or the 3552 PALM screen.
`(C) Return the call using the telephone number as
`specified below.
`(1) If an attorney or agent is of record in the
`application, information concerning the application
`should only be released by calling the attorney’s or
`agent’s telephone number obtained from PALM Intra-
`net or the 3552 PALM screen.
`(2) If the applicant or an authorized representa-
`tive of the assignee of record requests information,
`and there is no attorney or agent of record and the cor-
`respondence address of record has been verified,
`information concerning
`the application can be
`released to the caller using the telephone number
`given by the caller. If the caller’s association with the
`application cannot be verified, no information con-
`cerning the application will be released. However, the
`caller should be informed that the caller's association
`with the application could not be verified.
`
`In handling an in-person request, ask the requester
`to wait while verifying their identification as in (B)
`above.
`102
`
`Information as to Status of
`an Application
`
`37 CFR 1.14. Patent applications preserved in confidence.
`(a) Confidentiality of patent application information. Patent
`applications that have not been published under 35 U.S.C. 122(b)
`are generally preserved in confidence pursuant to 35 U.S.C.
`122(a). Information concerning the filing, pendency, or subject
`matter of an application for patent, including status information,
`and access to the application, will only be given to the public as
`set forth in § 1.11 or in this section.
`(1) Status information is:
`(i) Whether the application is pending, abandoned, or
`
`patented;
`
`(ii) Whether the application has been published under
`35 U.S.C. 122(b); and
`(iii) The application “numerical identifier” which may
`
`be:
`
`(A) The eight-digit application number (the two-
`digit series code plus the six-digit serial number); or
`(B) The six-digit serial number plus any one of the
`filing date of the national application, the international filing date,
`or date of entry into the national stage.
`
`August 2001
`
`100-4
`
`Exhibit 1016, Page 5
`
`

`
`SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING
`
`102
`
`(2) Access is defined as providing the application file for
`review and copying of any material in the application file.
`
`(b) When status information may be supplied. Status infor-
`mation of an application may be supplied by the Office to the pub-
`lic if any of the following apply:
`
`(1) Access to the application is available pursuant to para-
`graph (e) of this section;
`
`(2) The application is referred to by its numerical identi-
`fier in a published patent document (e.g., a U.S. patent, a U.S.
`patent application publication, or an international application pub-
`lication), or in a U.S. application open to public inspection
`(§ 1.11(b), or paragraph (e)(2)(i) or (e)(2)(ii) of this section);
`
`(3) The application is a published international applica-
`tion in which the United States of America has been indicated as a
`designated state; or
`
`(4) The application claims the benefit of the filing date of
`an application for which status information may be provided pur-
`suant to paragraphs (b)(1) through (b)(3) of this section.
`
`*****
`
`Status information of an application means only the
`following information:
`
`(A) whether the application is pending, aban-
`doned, or patented;
`
`(B) whether the application has been published;
`
`and
`
`(C) the application number or the serial number
`plus any one of the filing date of the national applica-
`tion, the international filing date or the date of entry
`into the national stage.
`
`A requester seeking status information regarding an
`application should check the Patent Application Infor-
`mation Retrieval (PAIR) system on the U.S. Patent
`and Trademark Office
`(USPTO) website
`at
`www.uspto.gov/ebc. Alternatively, the requester may
`contact the File Information Unit (see MPEP § 1730).
`The File Information Unit (FIU) will check the rele-
`vant Office records and will inform the requester
`whether the application has been published or has
`issued as a patent. If the application has been pub-
`lished, the FIU will inform the requester of the publi-
`cation number and publication date, and if the
`application has issued as a patent, the patent number,
`issue date and classification. If the application has not
`been published, but is pending or abandoned then the
`FIU should determine whether the requester is:
`
`(A) an inventor;
`(B) an attorney or agent of record in the applica-
`tion;
`(C) an assignee of record in the application; or
`(D) a person with written authority from (A), (B),
`or (C).
`
`If the requester is (A), (B), (C), or (D), as set forth
`above, then the requester is entitled to status informa-
`tion. If the requester is inquiring about whether a
`reply was received or when an Office action can be
`expected, the requester should be directed to call the
`Technology Center (TC) to which the application is
`assigned. The assignment of an application to a TC
`can be determined from PALM Intranet or the 2952
`PALM screen.
`If the requester is not (A), (B), (C), or (D), as set
`forth above, and the application is (1) identified by
`application number (or serial number and filing date)
`in a published patent document, or (2) an application
`claiming the benefit of the filing date of an applica-
`tion identified by application number (or serial num-
`ber and filing date) in a published patent document,
`then a written request including a copy of a published
`patent document (United States or foreign) which
`refers to the specific application must be provided
`when requesting status information for the applica-
`tion. If the published patent document is not in
`English, then a translation of the pertinent part thereof
`must also be included. The published patent document
`may be presented in person to the FIU or in written
`correspondence to the U.S. Patent and Trademark
`Office, for example, by facsimile transmission. Any
`written correspondence must include a return address
`or facsimile number. If the application is referred to
`by application number or serial number and filing
`date in a published patent document (e.g., a U.S.
`patent, a U.S. patent application publication, or an
`international application publication), or in a U.S.
`application open to public inspection, pursuant to
`37 CFR 1.14(b)(2), the requester is entitled to status
`information for the application. (The published patent
`document will at least identify the application from
`which the patent itself was issued.) PALM Intranet or
`the 2960 PALM screen should be used to determine
`the status of the application. If the requester asks
`whether there are any applications on file which claim
`the benefit of the filing date of the identified applica-
`tion, pursuant to 37 CFR 1.14(b)(4), status informa-
`
`100-5
`
`August 2001
`
`Exhibit 1016, Page 6
`
`

`
`103
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`tion (application number, filing date and whether the
`application is pending, abandoned or patented) for the
`applications claiming benefit of the identified applica-
`tion may be given to the requester as well. PALM
`Intranet or the 2962 PALM screen should be used to
`determine the application number and filing date of
`any applications claiming the benefit of the filing date
`of the identified application. The requester should be
`informed of the national applications listed in the
`“child” section of the screen. If the child application is
`not shown to have been patented on the 2962 PALM
`screen, the 2960 PALM transaction should be used to
`determine whether the application is pending or aban-
`doned. Alternatively, the 2963 PALM transaction may
`be used with the patent number for continuity data for
`the patent. Other information contained on the screen,
`such as whether the application is a Continuation-in-
`Part (CIP), continuation or divisional application, the
`date of abandonment of the application, and the issue
`date, may be confidential information and should not
`be communicated. As to the extent of the chain of
`applications for which status information is available,
`the rule applies only to subsequent and not prior
`applications.
`
`Furthermore, if the requester is not (A), (B), (C), or
`(D), as set forth above, but the application is a
`national stage application or any application claiming
`the benefit of the filing date of a published interna-
`tional application and the United States of America
`has been indicated as a Designated State in the inter-
`national application, pursuant to 37 CFR 1.14(b)(3)
`and (b)(4), the requester is entitled to status informa-
`tion for the national stage application as well as any
`application claiming the benefit of the filing date of
`the published international application. A copy of the
`first page of the published international application or
`of the corresponding page of the PCT Gazette must be
`supplied with the status request. If the requester asks
`whether an international application has entered the
`national stage, then the 3133 PALM screen should be
`used and the requester should be informed of any
`national stage application indicated. If status informa-
`tion is requested for any application claiming the ben-
`efit of the filing date of the referenced published
`international application, there is no single PALM
`transaction for this request. The status request should
`be forwarded to the PCT Help desk for a response to
`this inquiry (see MPEP § 1730). Alternatively, inquir-
`
`ies relating to applications claiming the benefit of the
`filing date of a published international application
`may be directed to the PCT Help desk. Only the serial
`number and filing date, or application number, as well
`as whether the application is pending, abandoned, or
`patented may be given for the national stage applica-
`tion and for any applications claiming the benefit of
`the filing date of the referenced published interna-
`tional application. Other information contained on the
`screen, such as whether the application is a CIP, con-
`tinuation or divisional application, the date of aban-
`donment of the application and issue date may be
`confidential information and should not be communi-
`cated.
`
`STATUS LOCATION INFORMATION FOR OF-
`FICE PERSONNEL
`
`When it is desired to determine the current location
`or status of an application, Office personnel should
`use PALM.
`However, inasmuch as not 06 series applications
`prior to 714,000 are currently in the PALM system,
`Office personnel requesting status/location informa-
`tion on those applications determined not to be in the
`PALM system will be requested to contact the FIU
`(see MPEP § 1730) where the numerical index
`records of the above mentioned applications are main-
`tained.
`103
`
`Right of Public to Inspect Patent
`Files and Some Application Files
`
`37 CFR 1.11. Files open to the public.
`(a) The specification, drawings, and all papers relating to the
`file of an abandoned published application, except if a redacted
`copy of the application was used for the patent application publi-
`cation, a patent, or a statutory invention registration are open to
`inspection by the public, and copies may be obtained upon the
`payment of the fee set forth in § 1.19(b)(2). See § 2.27 for trade-
`mark files.
`(b) All reissue applications, all applications in which the
`Office has accepted a request to open the complete application to
`inspection by the public, and related papers in the application file,
`are open to inspection by the public, and copies may be furnished
`upon paying the fee therefor. The filing of reissue applications,
`other than continued prosecution applications under § 1.53(d) of
`reissue applications, will be announced in the Official Gazette.
`The ann