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`APPLE INC.
`EXHIBIT 1019 - PAGE 1
`
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`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 I
`Manual of Patent Examining Procedure
`
`APPLE INC.
`August 2001
`EXHIBIT 1019 - PAGE 2
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`APPLE INC.
`EXHIBIT 1019 - PAGE 2
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`

`
`Appendix T Patent Cooperation Treaty
`
`
`Patent Cooperation Treaty
`
`Done at Washington on June 19, 1970,
`amended on October 2, 1979,
`and modified on February 3, 1984
`(as in force on January 1, 1998)
`
`TABLE OF CONTENTS1
`
`Preamble
`
`Introductory Provisions
`Article 1
`Establishment of a Union
`Article 2
`Definitions
`
`Chapter I: International Application and International
`Search
`
`Article 3
`Article 4
`Article 5
`Article 6
`
`Article 7
`Article 8
`Article 9
`Article 10
`Article 11
`
`Article 12
`
`Article 13
`
`Article 14
`
`Article 15
`
`Article 16
`Article 17
`
`Article 18
`Article 19
`
`Article 20
`Article 21
`
`Article 22
`
`The International Application
`The Request
`The Description
`The Claims
`
`The Drawings
`Claiming Priority
`The Applicant
`The Receiving Office
`Filing Date and Effects of the
`International Application
`Transmittal of the International
`
`Application to the International
`Bureau and the International
`
`Searching Authority
`Availability of Copy of the
`International Application to
`the Designated Offices
`Certain Defects in the International
`
`Application
`The International Search
`
`The International Searching Authority
`Procedure Before the International
`
`Searching Authority
`The International Search Report
`Amendment of the Claims Before
`the International Bureau
`1
`
`Communication to Designated Offices
`International Publication
`
`Copy, Translation, and Fee, to
`Designated Offices
`
`Article 23
`Article 24
`
`Article 25
`Article 26
`
`Article 27
`Article 28
`
`Article 29
`
`Article 30
`
`Delaying of National Procedure
`
`Possible Loss of Effect in Designated
`States
`
`Review by Designated Offices
`Opportunity to Correct Before
`Designated Offices
`National Requirements
`Amendment of the Claims, the
`Description, and the Drawings,
`Before Designated Offices
`Effects of the International
`Publication
`Confidential Nature of the
`
`International Application
`
`Chapter II.’ International Preliminary Examination
`
`Article 31
`
`Demand for International
`
`Article 32
`
`Article 33
`
`Article 34
`
`Article 35
`
`Article 36
`
`Article 37
`Article 38
`
`Article 39
`
`Article 40
`
`- Article 41
`
`Article 42
`
`Preliminary Examination
`The International Preliminary
`Examining Authority
`The International Preliminary
`Examination
`Procedure Before the International
`
`Preliminary Examining Authority
`The International Preliminary
`Examination Report
`Transmittal, Translation, and
`Communication of the International
`
`Preliminary Examination Report
`Withdrawal of Demand or Election
`Confidential Nature of the Interna-
`
`tional Preliminary Examination
`Copy, Translation, and Fee, to Elected
`Offices
`
`Delaying of National Examination
`and Other Processing
`Amendment of the Claims, the
`Description, and the Drawings,
`before Elected Offices
`Results of National Examination
`in Elected Offices
`
`Chapter III: Common Provisions
`Article 43 V
`Seeking Certain Kinds of Protection
`Article 44
`Seeking Two Kinds of Protection
`Article 45
`Regional Patent Treaties
`Article 46
`Incorrect Translation of the
`
`Article 47
`
`International Application
`Time Limits
`
`1 This Table of Contents is added for the convenience of the reader. It does not appear in the signed text of the Treaty.
`
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`MANUAL OF PATENT EXAMINING PROCEDURE
`
`Article 48
`Article 49
`
`Delay in Meeting Certain Time Limits
`Right to Practice Before International
`Authorities
`
`Chapter IV: Technical Services
`Article 50
`Patent Information Service
`Article 51
`Technical Assistance
`Article 52
`Relations with Other Provisions
`of the Treaty
`
`Chapter V: Administrative Positions
`Article 5 3
`Assembly
`Article 54
`Executive Committee
`Article 55
`International Bureau
`
`Article 5 6
`Article 57
`
`Committee for Technical Cooperation
`Finances
`
`Article 58
`
`Regulations
`
`Chapter VI: Disputes
`Article 59
`
`Disputes
`
`Chapter VII: Revision and Amendment
`Article 60
`Revision of the Treaty
`Article 61
`Amendment of Certain Provisions
`’
`of the Treaty
`
`Chapter VIII: Final Provisions
`Article 62
`Becoming Party to the Treaty
`Article 63
`Entry into Force of the Treaty
`Article 64
`Reservations
`
`Article 65
`Article 66
`
`Article 67
`Article 68
`Article 69
`
`Gradual Application
`Denunciation
`
`Signature and Languages
`Depositary Functions
`Notifications
`
`The Contracting States,
`Desiring to make a contribution to the progress of
`science and technology,
`Desiring to perfect the legal protection of inven-
`tions,
`
`Desiring to simplify and render more economical
`the obtaining of protection for inventions where pro-
`tection is sought in several countries,
`Desiring to facilitate and accelerate access by the
`public to the technical information contained in docu-
`ments describing new inventions,
`Desiring to foster and accelerate the economic
`development of developing countries through the
`adoption of measures designed to increase the effi-
`
`ciency of their legal systems, whether national or
`regional, instituted for the protection of inventions by
`providing easily accessible information on the avail-
`ability of technological solutions applicable to their
`special needs and by facilitating access to the ever
`expanding volume of modern technology,
`Convinced that cooperation among nations will
`greatly facilitate the attainment of these aims,
`Have concluded the present Treaty.
`
`Introductory Provisions
`
`Article 1
`
`Establishment of a Union
`
`The States party to this Treaty (hereinafter
`(1)
`called “the Contracting States”) constitute a Union for
`cooperation in the filing, searching, and examination,
`of applications for the protection of inventions, and
`for rendering special technical services. The Union
`shall be known as the International Patent Coopera-
`tion Union.
`
`(2) No provision of this Treaty shall be inter-
`preted as diminishing the rights under the Paris Con-
`vention for the Protection of Industrial Property of
`any national or resident of any country party to that
`Convention.
`
`Article 2
`
`Definitions
`
`For the purposes of this Treaty and the Regulations
`and unless expressly stated otherwise:
`(i)
`“application” means an application for the
`protection of an invention; references to an “applica-
`tion” shall be construed as references to applications
`for patents for inventions, inventors’ certificates, util-
`ity certificates, utility models, patents or certificates
`of addition,
`inventors’ certificates of addition, and
`
`utility certificates of addition;
`(ii)
`references to a “patent” shall be construed
`as references to patents for inventions, inventors’ cer-
`tificates, utility certificates, utility models, patents or
`certificates of addition, inventors’ certificates of addi-
`
`tion, and utility certificates of addition;
`(iii)
`“national patent” means a patent granted by
`a national authority;
`(iv)
`“regional patent” means a patent granted by
`a national or an intergovernmental authority having
`
`August 2001
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`PATENT COOPERATION TREATY
`
`shall send to the said Office or the applicant, respec-
`tively, copies of the documents cited in the interna-
`tional search report, as provided in the Regulations.
`
`Article 21
`
`International Publication
`
`The International Bureau shall publish inter-
`(1)
`national applications.
`(2)(a) Subject to the exceptions provided for in
`subparagraph (b) and in Article 64(3),
`the interna-
`tional publication of the international application shall
`be effected promptly after the expiration of 18 months
`from the priority date of that application.
`(b)
`The applicant may ask the International
`Bureau to publish his international application any
`time before the expiration of the time limit referred to
`in subparagraph (a). The International Bureau shall
`proceed accordingly, as provided in the Regulations.
`(3)
`The international search report or the decla-
`ration refeired to in Article 17(2)(a) shall be pub-
`lished as prescribed in the Regulations.
`(4)
`The language and form of the international
`publication and other details are governed by the Reg-
`ulations.
`
`There shall be no international publication if
`(5)
`the international application is withdrawn or is con-
`sidered withdrawn before the technical preparations
`for publication have been completed.
`(6)
`If the international application contains
`expressions or drawings which, in the opinion of the
`International Bureau, are contrary to morality or pub-
`lic order, or if, in its opinion, the international applica-
`tion contains disparaging statements as defined in the
`Regulations, it may omit such expressions drawings,
`and statements, from its publications, indicating the
`place and number of words or drawings omitted, and
`furnishing, upon request, individual copies of the pas-
`sages omitted.
`
`Article 22
`
`Copy, Translation, and Fee to Designated Offices
`
`The applicant shall furnish a copy of the
`(1)
`international application (unless the communication
`provided for in Article 20 has already taken place)
`and a translation thereof (as prescribed), and pay the
`national fee (if any),
`to each designated Office not
`later than at the expiration of 20 months from the pri-
`
`ority date. Where the national law of the designated
`State requires the indication of the name of and other
`prescribed data concerning the inventor but allows
`that these indications be furnished at a time later than
`
`that of the filing of a national application, the appli-
`cant shall, unless they were contained in the request,
`furnish the said indications to the national Office of or
`
`acting for that State not later than at the expiration of
`20 months from the priority date.
`
`(2) Where the International Searching Author-
`ity makes a declaration, under Article 17(2)(a), that
`no international search report will be established, the
`time limit for performing the acts referred to in para-
`graph (1) of this Article shall be the same as that pro-
`vided for in paragraph (i).
`‘
`
`(3) Any national law may, for performing the
`acts referred to in paragraphs (1) or (2), fix time limits
`which expire later than the time limit provided for in
`those paragraphs.
`
`. Article 23
`
`Delaying of National Procedure
`
`(1) No designated Office shall process or exam-
`ine the international application prior to the expiration
`of the applicable time limit under Article 22.
`
`(2) Notwithstanding the provisions of para-
`graph (1), any designated Office may, on the express
`request of the applicant, process or examine the inter-
`national application at any time.
`
`Article 24
`
`Possible Loss of Effect in Designated States
`
`Subject, in case (ii) below, to the provisions
`(1)
`of Article 25, the effect of the international applica-
`tion provided for in Article 11(3) shall cease in any
`designated State with the same consequences as the
`withdrawal of any national application in that ‘State:
`
`if the applicant withdraws his interna-
`(i)
`tional application or the designation of that State;
`
`if the international application is consid-
`(ii)
`ered withdrawn by virtue of Articles 12(3), l4(l)(b),
`l4(3)(a), or 14(4), or if the designation of that State is
`considered withdrawn by virtue of Article 14(3)(b);
`
`if the applicant fails to perform the acts
`(iii)
`referred to in Article 22 within the applicable time
`limit,
`
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`PATENT COOPERATION TREATY
`
`Regulations Under the Patent
`Cooperation Treaty
`
`(as in force from March 1, 2001)4
`
`Adopted on June 19, 1970, and amended on April
`14, 1978, October 3, 1978, May 1, 1979, June 16,
`1980, September 26, 1980, July 3, 1981, September
`10, 1982, October 4, 1983, February 3, 1984, Septem-
`ber 28, 1984, October 1, 1985, July 12, 1991, October
`2, 1991, September 29, 1992, September 29, 1993,
`October 3, 1995, October 1, 1997, September 15,
`1998, September 29, 1999 and March 17, 2000.
`
`TABLE OF CONTENTS5
`
`PartA.' Introductory Rules
`
`Rule 1
`
`Abbreviated Expressions
`
`1.1
`
`Meaning of Abbreviated
`Expressions
`
`Rule 2
`
`Interpretation of Certain Words
`
`2.1
`
`2.2
`2.2biS
`
`2.3
`
`“Applicant”
`
`“Agent”
`“Common Representative”
`
`“Signature”
`
`Part B: Rules Concerning Chapter I of the Treaty
`
`Rule 3
`
`The Request (Form)
`
`3.1
`
`3.2
`3.3
`
`3.4
`
`Form of Request
`
`Availability of Forms
`Check List
`
`Particulars
`
`Rule 4
`
`The Request (Contents)
`
`4.1
`
`4.2
`
`4.3
`4.4
`
`4.5
`4.6
`
`4.7
`
`4.8
`4.9
`
`4.10
`4.11
`4.12
`
`Mandatory and Optional
`Contents; Signature
`The Petition
`
`Title of the Invention
`Names and Addresses
`
`The Applicant
`The Inventor
`
`The Agent
`
`Common Representative
`Designation of States
`
`Priority Claim
`Reference to Earlier Search
`Choice of Certain Kinds of
`Protection
`
`4.13
`
`Identification of Parent
`
`4.14
`
`Application or Parent Grant
`Continuation or Continuation-
`in—Part
`
`4.14biS Choice of International
`Searching Authority
`
`4.15
`4.16
`
`4.17
`
`4.18
`
`Signature
`Transliteration or Translation
`of Certain Words
`
`Declarations Relating to Na-
`tional Requirements Referred
`to in Rule 51b".1(a)(i) to (v)
`Additional Matter
`
`Rule 5
`
`The Description
`
`5.1
`5.2
`
`iManner of the Description
`Nucleotide and/or Amino Acid
`
`Sequence Disclosure
`
`Rule 6
`
`The Claims
`
`6.1
`
`Number and Numbering
`of Claims
`
`4 Additional amendments to the regulations were adopted by the PCT Union Assembly on October 1, 1997, which will enter in force no
`later than January 1, 1998. See Report of the PCT Union Assembly, 24th Session (11th Ordinary), Geneva, September 16 to October 1,
`1997 (Oct. 1, 1997). The following rules will be amended and will enter into force on July 1, 1998: Rules 3-5, 11, 12, 13”’, 13"’, 14-17,
`19, 20, 22, 23, 26, 26”‘, 29, 34, 37, 38, 43, 44, 46-49, 54, 55, 57—62, 66, 69, 70, 76, 80, 82"”, 91, 92, 93, 94. New Rule 58%‘ will be added
`and will enter in force July 1, 1998. New Rules 89”‘ and 89”’ will be added and will enter in force at the same time as the modifications
`of the Administrative Instructions implementing those new Rules, the effective date to be included in the nomination of those modifica-
`
`tionsby the Director General.
`
`5 Table of Contents is added for the convenience of the reader; it does not appear in the original.
`
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`PATENT COOPERATION TREATY
`
`same International Searching Authority, that Author-
`ity shall refund the search fee paid in connection with
`the later international application to the extent and
`under the conditions provided for in the agreement
`under Article 16(3)(b),
`if the international search
`report on the later international application could
`wholly or partly be based on the results of the interna-
`tional search effected on the earlier
`international
`
`application.
`
`Rule 16”“
`
`Extension of Time Limits for Payment of Fees
`
`16biS.l Invitation by the Receiving Ofiice
`
`(a) Where, by the time they are due under Rules
`14.1(c), 15.4(a) and 16.1(f), the receiving Office finds
`that no fees were paid to it, or that the amount paid to
`it is insufficient to cover the transmittal fee, the basic
`
`fee and the search fee, the receiving Office shall invite
`the applicant to pay to it the amount required to cover
`those fees, together with, where applicable, the late
`payment fee under Rule 16bis.2, within a time limit of
`one month from the date of the invitation.
`
`(b) Where, by the time they are due under Rule
`15.4(b), the receiving Office finds that no fees were
`paid to it, or that the amount paid to it is insufficient to
`cover the designation fees necessary to cover all the
`designations under Rule 4.9(a), the receiving Office
`shall
`invite the applicant to pay to it
`the amount
`required to cover those fees,
`together with, where
`applicable,
`the late payment fee under Rule 16bi‘.2,
`within a time limit of one month from the date of the
`
`invitation. The amount payable in respect of any des-
`ignation fee shall be the amount applicable on the last
`day of the one—year period from the priority date if the
`time limit under Rule 15 .4(b)(i) applies or the amount
`applicable on the date of receipt of the international
`application if the time limit under Rule 15 .4(b)(ii)
`applies.
`
`(c) Where the receiving Office has sent to the
`applicant an invitation under paragraph (a) or (b) and
`the applicant has not, within the time limit referred to
`in that paragraph, paid in full the amount due, includ-
`ing, where applicable,
`the late payment fee under
`Rule l6bi’.2,
`the receiving Office shall, subject
`to
`' paragraph (d):
`
`allocate any moneys paid as specified by
`(i)
`the applicant or, in the absence of such specification,
`as prescribed by the Administrative Instructions,
`
`(ii) make the applicable declaration under
`Article 14(3), and
`
`(iii) proceed as provided in Rule 29.
`(d) Any payment received by the receiving
`Office before that Office sends the invitation under
`
`paragraph (a) or (b) shall be considered to have been
`received before the expiration of the time limit under
`Rule 14.1(c), 15.4(a) or (b) or 16.1(f), as the case may
`be.
`
`(e) Any payment received by the receiving
`Office before that Office makes the applicable decla-
`ration under Article 14(3) shall be considered to have
`
`been received before the expiration of the time limit
`referred to in paragraph (a) or (b).
`
`l6bi““.2 Late Payment Fee
`(a)
`The payment of fees in response to an invi-
`tation under Rule 16b1s.1(a) or (b) may be subjected
`by the receiving Office to the payment to it, for its
`own benefit, of a late payment fee. The amount of that
`fee shall be:
`
`50% of the amount of unpaid fees which
`(i)
`is specified in the invitation, or,
`
`if the amount calculated under item (i) is
`(ii)
`less than the transmittal fee, an amount equal to the
`transmittal fee.
`
`(b) The amount of the late payment fee shall
`not, however, exceed the amount of the basic fee
`referred to in item 1 (a) of the Schedule of Fees.
`
`Rule 17
`
`The Priority Document
`
`17.1 Obligation to Submit Copy of Earlier National
`or International Application
`
`(a) Where the priority of an earlier national or
`international application is claimed under Article 8, a
`copy of that earlier application, certified by, the
`authority with which it was filed (“the priority docu-
`ment”), shall, unless already filed with the receiving
`Office together with the international application in
`which the priority claim is made, and subject to para-
`graph (b), be submitted by the applicant to the Inter-
`national Bureau or to the receiving Office not later
`than 16 months after the priority date, provided that
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`MANUAL OF PATENT EXAMINING PROCEDURE
`
`any copy of the said earlier application which is
`received by the International Bureau after the expira-
`tion of that time limit shall be considered to have been
`
`received by that Bureau on the last day of that time
`limit if it reaches it before the date of international
`
`publication of the international application.
`
`(b) Where the priority document is issued by
`the receiving Office,
`the applicant may,
`instead of
`submitting the priority document, request the receiv-
`ing Office to prepare and transmit the priority docu-
`ment to the International Bureau. Such request shall
`be made not later than 16 months after the priority
`date and may be subjected by the receiving Office to
`the payment of a fee.
`
`If the requirements of neither of the two pre-
`(c)
`ceding paragraphs are complied with, any designated
`State may disregard the priority claim, provided that
`no designated Office shall disregard the priority claim
`before giving the applicant an opportunity to furnish
`the priority document within a time limit which shall
`be reasonable under the circumstances.
`
`17.2 Availability ofCopies
`
`(a) Where the applicant has complied with Rule
`17.1(a) or (b), the International Bureau shall, at the
`specific request of the designated Office, promptly
`but not prior to the international publication of the
`international application, furnish a copy of the priority
`document to that Office. No such Office shall ask the
`
`applicant himself to furnish it with a copy. The appli-
`cant shall not be required to furnish a translation to
`the designated Office before the expiration of the
`applicable time limit under Article 22. Where the
`applicant makes an express request to the designated
`Office under Article 23(2) prior to the international
`publication of the international application, the Inter-
`national Bureau shall, at the specific request of the
`designated Office, furnish a copy of the priority docu-
`ment to that Office promptly after receiving it.
`
`(b)
`The International Bureau shall not make
`copies of the priority document available to the public
`prior to the international publication of the intema—
`tional application.
`
`(c) Where the international application has
`been published under Article 21,
`the International
`Bureau shall furnish a copy of the priority document
`to any person upon request and subject to reimburse-
`ment of the cost unless, prior to that publication:
`
`(i)
`drawn,
`
`the international application was with-
`
`the relevant priority claim was withdrawn
`(ii)
`or considered, under Rule 26bi‘.2(b), not to have been
`made.
`
`[Deleted]
`(iii)
`(d)
`[Deleted]
`
`Rule 18
`
`The Applicant
`
`18.1 Residence and Nationality
`
`Subject to the provisions of paragraphs (b)
`(a)
`and (c), the question whether an applicant is a resident
`or national of the Contracting State of which he
`claims to be a resident or national shall depend on the
`national law of that State and shall be decided by the
`receiving Office.
`(b)
`In any case,
`(i)
`possession of a real and effective indus-
`trial or commercial establishment in a Contracting
`State shall be considered residence in that State, and
`
`a legal entity constituted according to the
`(ii)
`national law of a Contracting State shall be considered
`a national of that State.
`_
`(c) Where the international application is filed
`with the International Bureau as receiving Office, the
`International Bureau shall, in the circumstances speci-
`fied in the Administrative Instructions, request the
`national Office of, or acting for, the Contracting State
`concerned to decide the question referred to in para-
`graph (a). The International Bureau shall inform the
`applicant of any such request. The applicant shall
`have an opportunity to submit arguments directly to
`the national Office. The national Office shall decide
`
`the said question promptly.
`
`18.2
`
`[Deleted]
`
`18.3 Two or More Applicants
`If there are two or more applicants, the right to file
`an international application shall exist if at least one
`of them is entitled to file an international application
`according to Article 9.
`
`18.4 Information on Requirements Under National
`Law as to Applicants
`(a)
`and (b) [Deleted]
`(c)
`The International Bureau shall, from time to
`
`time, publish information on the various national laws
`
`August 2001
`
`T-54
`
`APPLE INC.
`EXHIBIT 1019 - PAGE 8
`
`APPLE INC.
`EXHIBIT 1019 - PAGE 8