Chapter   1700  Miscellaneous
---SECTION---1701 Office Personnel Not To Express Opinion on Validity or
Patentability of Patent 

Every patent is presumed to be valid.  35 U.S.C. 282, first sentence.
Public policy demands that every employee of the Patent and Trademark
Office refuse to express to any person any opinion as to the validity or
invalidity of, or the patentability or unpatentability of any claim in
any U.S. patent, except to the extent necessary to carry out

(A) an examination of a reissue application of the patent,

(B) a reexamination proceeding to reexamine the patent, or

(C) an interference involving the patent.

The question of validity or invalidity is otherwise exclusively a matter
to be determined by a court.  Members of the patent examining corps are
cautioned to be especially wary of any inquiry from any person outside
the Patent and Trademark Office, including an employee of another
Government agency, the answer to which might indicate that a particular
patent should not have issued.

When a field of search for an invention is requested, examiners should
routinely inquire whether the invention has been patented in the United
States.  If the invention has been patented, no field of search should
be suggested.

Employees of the Patent and Trademark Office, particularly patent
examiners who examined an application which matured into a patent or a
reissued patent or who conducted a reexamination proceeding, should not
discuss or answer inquiries from any person outside the Patent and
Trademark Office as to whether or not a certain reference or other
particular evidence was considered during the examination or proceeding
and whether or not a claim would have been allowed over that reference
or other evidence had it been considered during the examination or
proceeding. Likewise, employees are cautioned against answering any
inquiry concerning any entry in the patent or reexamination file,
including the extent of the field of search and any entry relating
thereto. The record of the file of a patent or reexamination proceeding
must speak for itself.

Practitioners can be of material assistance in this regard by refraining
from making improper inquiries of members of the patent examining corps.
Inquiries from members of the public relating to the matters discussed
above must of necessity be refused and such refusal should not be
considered discourteous or an expression of opinion as to validity or
patentability.

---SECTION---1701.01 Office Personnel Not To Testify 

It is the policy of the Patent and Trademark Office that its employees,
including patent examiners, will not appear as witnesses or give
testimony in legal proceedings, except under the conditions specified in
15 CFR Part 15, Subpart B. Any employee who testifies contrary to this
policy will be dismissed or removed. The reasons for this policy are set
out in  15 CFR 15.13.

Whenever an employee of the Patent and Trademark Office, including a
patent examiner, is asked to testify or receives a subpoena, the
employee shall immediately notify the Office of the Solicitor. Inquiries
requesting testimony shall be also referred immediately to the Office of
the Solicitor.

Patent examiners and other Patent and Trademark Office employees
performing or assisting in the performance of quasi-judicial functions,
are forbidden to testify as experts or to express opinions as to the
validity of any patent.

Any individual desiring the testimony of an employee of the Patent and
Trademark Office, including the testimony of a patent examiner or other
quasi-judicial employee, must comply with the provisions of 15 CFR Part
15, Subpart B.

A request for testimony of an employee of the Patent and Trademark
Office should be made to the Office of the Solicitor at least 10 working
days prior to the date of the expected testimony.

If an employee is authorized to testify, the employee will be limited to
testifying about facts within the employee's personal knowledge.
Employees are prohibited from giving expert or opinion testimony.
Fischer & Porter Co. v. Corning Glass Works, 61 F.R.D. 321, 181 USPQ 329
(E.D. Pa. 1974). Likewise, employees are prohibited from answering
hypothetical or speculative questions. In re Mayewsky, 162 USPQ 86, 89
(E.D. Va. 1969) (deposition of an examiner must be restricted to
relevant matters of fact and must avoid any hypothetical or speculative
questions or conclusions based thereon); ShafferTool Works v. Joy Mfg.
Co., 167 USPQ 170 (S.D. Tex. 1970) (deposition of examiner should be
limited to matters of fact and must not go into hypothetical or
speculative areas or the bases, reasons, mental processes, analyses, or
conclusions of the examiner in acting upon a patent application).
Employees will not be permitted to give testimony with respect to
subject matter which is privileged. Several court decisions limit
testimony with respect to quasi-judicial functions performed by
employees. Those decisions include United States v. Morgan, 313 U.S.
409, 422 (1941) (improper to inquire into mental processes of
quasi-judicial officer or to examine the manner and extent to which the
officer considered an administrative record); Western Electric Co. v.
Piezo Technology, Inc., 860 F.2d 428, 8 USPQ2d 1853 (Fed. Cir. 1988)
(patent examiner may not be compelled to answer questions which probe
the examiner's technical knowledge of the subject matter of a patent);
McCulloch Gas Processing Co. v. Department of Energy, 650 F.2d 1216,
1229 (Temp. Emer. Ct. App. 1981) (discovery of degree of expertise of
individuals performing governmental functions not permitted); In re
Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988) (technical or
scientific qualifications of examiners-in-chief are not legally relevant
in appeal under  35 U.S.C. 134 since board members need not be skilled
in the art to render obviousness decision);   Lange v. Commissioner, 352
F. Supp. 166, 176 USPQ 162 (D.D.C. 1972) (technical qualifications of
examiners-in-chief not relevant in  35 U.S.C. 145 action).

In view of the discussion above, if an employee is authorized to testify
in connection with the employee's involvement or assistance in a
quasi-judicial proceeding which took place before the Patent and
Trademark Office, the employee will not be permitted to give testimony
in response to questions which seek:

(A) Information about that employee's:

(1) Background;

(2) Expertise;

(3) Qualifications to examine or otherwise consider a particular patent
or trademark application;

(4) Usual practice or whether the employee followed a procedure set out
in any Office manual of practice (including the MPEP or TMEP) in a
particular case;

(5) Consultation with another Office employee;

(6) Understanding of:

(a) A patented invention, an invention sought to be patented, or patent
application, patent, reexamination or interference file;

(b) Prior art;

(c) Registered subject matter, subject matter sought to be registered,
or a trademark application, registration, opposition, cancellation,
interference, or concurrent use file;

(d) Any Office manual of practice;

(e) Office regulations;

(f) Patent, trademark, or other law; or

(g) The responsibilities of another Office employee;

(7) Reliance on particular facts or arguments;

(B) To inquire into the manner in and extent to which the employee
considered or studied material in performing a quasi-judicial function;
or

(C) To inquire into the bases, reasons, mental processes, analyses, or
conclusions of that Office employee in performing the quasi-judicial
function.

Any request for testimony addressed or delivered to the Office of the
Solicitor shall comply with  15 CFR 15.14(c).  All requests must be in
writing.  The need for a subpoena may be obviated where the request
complies with  15 CFR 15.14(c) if the party requesting the testimony
further meets the following conditions:

(A) The party requesting the testimony identifies the civil action or
other legal proceeding for which the testimony is being taken. The
identification shall include the:

(1) Style of the case;

(2) Civil action number;

(3) District in which the civil action is pending;

(4) Judge assigned to the case; and

(5) Name, address, and telephone number of counsel for all parties in
the civil action.

(B) The party agrees not to ask questions seeking information which is
precluded by  15 CFR 15.16(b);

(C) The party shall comply with applicable provisions of the Federal
Rules of Civil Procedure, including Rule 30, and give 10 working days
notice to the Office of the Solicitor prior to the date a deposition is
desired. Fifteen working days notice is required for any deposition
which is desired to be taken between November 15 and January 15;

(D) The party agrees to notice the deposition at a place convenient to
the Patent and Trademark Office. The Conference Room in the Office of
the Solicitor is deemed to be a place convenient to the Office; and

(E) The party agrees to supply a copy of the transcript of the
deposition to the Patent and Trademark Office for its records.

Absent a written agreement meeting the conditions specified in
paragraphs (A) through (E), a party must comply with the precise terms
of  15 CFR 15a.4(c) and the Patent and Trademark Office will not permit
a deposition without issuance of a subpoena.

---SECTION---1702 Restrictions on Former Examiners 

37 CFR 10.10 Restrictions on practice in patent cases. 

(a) Only practitioners who are registered under Section  10.6 or
individuals given limited recognition under Section  10.9 will be
permitted to prosecute patent applications of others before the Office.

(b) No individual who has served in the patent examining corps of the
Office may practice before the Office after termination of his or her
service, unless he or she signs a written undertaking.

(1) Not to prosecute or aid in any manner in the prosecution of any
patent application pending in any patent examining group during his or
her period of service therein, and

(2) Not to prepare or prosecute or to assist in any manner in the
preparation or prosecution of any patent application of another (i)
assigned to such group for examination and (ii) filed within two years
after the date he or she left such group, without written authorization
of the Director. Associated and related classes in other patent
examining groups may be required to be included in the undertaking or
designated classes may be excluded from the undertaking. When an
application for registration is made after resignation from the Office,
the applicant will not be registered if he or she has prepared or
prosecuted or assisted in the preparation or prosecution of any patent
application as indicated in the paragraph. Knowingly preparing or
prosecuting or providing assistance in the preparation or prosecution of
any patent application contrary to the provisions of this paragraph
shall constitute misconduct under Section  10.23(c)(13) of this part.

(c) A practitioner who is an employee of the Office cannot prosecute or
aid in any manner in the prosecution of any patent application before
the Office.

(d) Practice before the Office by Government employees is subject to any
applicable conflict of interest laws, regulations, or codes of
professional responsibility.

See also MPEP Section  309.

---SECTION---1703 The Official Gazette

The Official Gazette of the United States Patent and Trademark
Office-Patents reports every Tuesday the reexamination certificates,
reissues, plant patents, utility patents, and design patents issued and
statutory invention registrations (if any) published on that day.  As to
each patent, the following information is given:

(A) Applicant's name;

(B) Applicant's city and state of residence and, if unassigned,
applicant's Post Office address;

(C) Assignee's name, city and state of residence, and Post Office
address, if assigned;

(D) Filing date;

(E) Application number;

(F) Patent number;

(G) Title of the invention;

(H) Number of claims;

(I) U.S. classification by class and subclass;

(J) Selected figure of the drawing, if any, except in the case of a
plant patent;

(K) A claim or claims;

(L) International classification;

(M) U.S. parent application data, if any; 

(N) Foreign priority application data, if any; and

(O) For reissue patents, the original patent number and issue date, and
the original application number and filing date.

The   Official Gazette of the United States Patent and Trademark
Office-Patents also includes notices of patent and trademark suits,
indexes of patents, disclaimers filed, Certificates of Correction
issued, lists of applications and patents available for license or sale,
notices of  37 CFR 1.47 applications, and general information such as
orders, notices, changes in rules, changes in classification, certain
adverse decisions in interferences, the condition of work in the Office,
registration of attorneys and agents, reprimands, suspensions, and
exclusions of registered attorneys and agents, and notices to parties
not reached by mail.

Official Gazette of the United States Patent and Trademark
Office-Trademarks.  The official journal of the Patent and Trademark
Office relating to trademarks is published every Tuesday.  It contains
an illustration of each trademark published for opposition, a list of
trademarks registered, a classified list of registered trademarks, and
Patent and Trademark Office notices.

Orders should be addressed and remittances made payable to
Superintendent of Documents, U.S. Government Printing Office,
Washington, D.C. 20402.

---SECTION---1704 Application Records and Reports

The PALM (Patent Application Locating and Monitoring) System is the
automated data management system used by the Patent and Trademark Office
for the retrieval and/or online updating of the computer record of each
patent application. The PALM System also maintains examiner time,
activity, docket, and technical support staff backlog records.

Information retrieval from PALM is by means of video display terminals
or the PALM intranet. Information update is by means of video display
transactions and, predominantly, by means of transactions entered via
bar code readers (BCR). Among other items, classification, examiner
docket, attorney, inventor, and prosecution history data as well as the
location of each application can be retrieved and updated online with
PALM.

DOCKET REPORTS

The recording of changes to examiner dockets is accomplished by PALM
simultaneously with the recording of incoming and outgoing
communications, transfers of applications to and from dockets, and other
types of updating of the application record.  The status of each
examiner's docket can be determined by means of online video display
transactions or the PALM intranet and is supplemented by periodic
printed reports. Docket reports that are generated by PALM include the
individual examiner; new, special, and amended docket which lists
applications in priority order; the individual examiner rejected
application docket; the individual examiner new application profile,
which lists the totals of new applications in each docket, sorted by
month of filing; and various summaries of the above reports at the group
art unit, group, and corps levels.

BIWEEKLY TIME AND ACTIVITY REPORTS

All reporting of examiner time and activity is on a biweekly basis. Each
examiner's examining and non-examining time, as listed on the examiners'
Biweekly Time Worksheet, PTO-690E, is entered into PALM for use in the
computation of productivity data. The biweekly reports produced include
the individual Biweekly Examiner Time and Activity Report which lists,
by application number, all applications for which actions have been
counted during the biweekly period. The type of action counted for each
application is also indicated on the report. This report also includes
examiner time data, an action summary, and cumulative summaries to date
for the current quarter and fiscal year.  Various summary reports at the
Art Unit, Group, and Corps levels are also produced.

---SECTION---1705 Examiner Docket, Time, and Activity Recordation 

Actions prepared by examiners are submitted to their respective legal
instrument examiners for processing in accordance with the procedures
set forth below.

PROCEDURES FOR REPORTING AN EXAMINER'S ACTION

(A) The examiner completes an Examiner's Case Action Worksheet, Form
PTO-1472, which identifies the type of action prepared.  The worksheet
is attached to the application for processing by the legal instrument
examiner;

(B) The legal instrument examiner checks the worksheet to verify that
the examiner provided all necessary information relating to that action;

(C) The legal instrument examiner enters the type of action and the
count date thereof on the Contents flap of the file wrapper; and

(D) The legal instrument examiner enters the examiner's action for the
application directly into PALM using a bar code reader (BCR).

Each examiner's action that is counted and reported to the PALM system
will be listed by application number on the Biweekly Examiner Time and
Activity Report.  The examiner should check his/her Biweekly Examiner
Time and Activity Report to verify that all applications worked on for
the biweekly report period are properly listed.

Examples of examiner's actions that are reported to PALM by the legal
instrument examiner, but are not listed on the Biweekly Examiner Time
and Activity Report, include examiner's amendments, actions in
reexamination proceedings, interview summaries, transfers of
applications, and supplemental Office actions and miscellaneous Office
letters which do not set a period for reply.

Form PTO 1472. Examiner's Case Action Worksheet.[GRAPHIC]

COUNTING OF FIRST ACTION ON THE MERITS (FAOM)

Office actions on the merits consist of rejections (final and
non-final), Ex parte Quayle actions, and allowances.

The first time an examiner performs one of the above merit actions,
he/she receives credit for a First Action on the Merits (FAOM) on the
production reports.

A second/subsequent but First Action on the Merits (FAOM) action usually
occurs when the first action is a restriction/election only action and
the second action is a merit action. The examiner indicates the type of
second action on the Examiner's Case Action Worksheet, and the PALM
system will automatically determine if it is a FAOM. If the second
action is a FAOM, the action will be listed and credited on the Biweekly
Examiner Time and Activity Report as a Second/Subsequent FAOM.

COUNTING OF DISPOSALS

An examiner receives a "disposal" count for the following actions:

(A) Allowance;

(B) Abandonment;

(C) Examiner's Answer;

(D) International Preliminary Examination Report;

(E) SIR disposal (only after a FAOM; see MPEP Section  1101); and

(F) Interference wherein the application would be in condition for
allowance but for the interference.

These same items constitute the "disposals" for performance evaluation
of examining art units and groups. However, disposals at the Office
level consist only of allowances and abandonments.

For either an allowance or an abandonment after an Examiner's Answer or
decision by a court or the Board of Patent Appeals and Interferences, no
disposal credit is received, though these actions are indicated on the
Biweekly Examiner Time and Activity Report.

CORRECTION INFORMATION

(A) If any information is either missing from or incorrect on the
Biweekly Examiner Time and Activity Report, the examiner should promptly
notify the legal instrument examiner by providing all the pertinent
information necessary to make the changes to the PALM system (e.g.,
examining hours, application number, type of action, etc.).

(B) The legal instrument examiner will report the necessary changes and
corrections directly into PALM.  These changes will be listed on the
next Biweekly Examiner Time and Activity Report.

(C) If any information is missing from the last Biweekly Examiner Time
and Activity Report of a quarter (except at the end of a fiscal year) or
is incorrect, the examiner should promptly notify the legal instrument
examiner and his/her Supervisory Patent Examiner (SPE). The legal
instrument examiner will make the appropriate changes directly into the
PALM system.  The changes will be listed on the next Biweekly Examiner
Time and Activity Report. However, these changes will not be reflected
in the last Quarter's Report; the examiner's SPE may manually make an
adjustment to the records to show these changes.

(D) In order to ensure that all PALM reports are correct at the end of
the fiscal year (rating period), a special correction cycle is provided
on the PALM system. If any information is missing from or is incorrect
on the last Biweekly Examiner Time and Activity Report, the examiner
should immediately notify the legal instrument examiner and his/her SPE.
These changes will be reflected in the examiner's final biweekly report
for the entire fiscal year.

---SECTION---1706 Disclosure Documents 

The Patent and Trademark Office (PTO) maintains for 2 years "Disclosure
Documents" as evidence of the dates of conception of inventions.

THE PROGRAM

A paper disclosing an invention and signed by the inventor or inventors
may be forwarded to the PTO by the inventor or inventors, by the owner
of the invention, or by the attorney or agent of the inventor(s) or
owner. The Disclosure Document will be retained for 2 years and then be
destroyed unless it is referred to in a separate letter in a related
application filed within those 2 years.

Disclosure Documents may also be filed at selected Patent and Trademark
Office Depository Libraries, presently including the Sunnyvale Center
for Innovation, Inventions, and Ideas; the Detroit Public Library; and
the Fondren Library at Rice University. A current listing is available
from the PTO's Patent and Trademark Depository Library Program office.
The documents are date-stamped and numbered at these PTDLs. One copy of
the document is is retained at the PTDL for its records. Original
documents are sent to the PTO for fee collection, processing, and
retention. 

The Disclosure Document is not a patent application, and the date of its
receipt in the PTO will not become the effective filing date of any
patent application subsequently filed. However, like patent
applications, these documents will be kept in confidence by the PTO.

This program does not diminish the value of the conventional witnessed
and notarized records as evidence of conception of an invention. It
should provide a more credible form of evidence than that provided by
the popular practice of mailing a disclosure to oneself or another
person by registered mail.  A Disclosure Document is available to the
public when a patent application which refers to it issues as a patent.

CONTENT OF DISCLOSURE DOCUMENT

The benefits provided by the Disclosure Document will depend upon the
adequacy of the disclosure.  It is recommended that the document be a
clear and complete explanation of the manner and process of making and
using the invention. This description must be in sufficient detail to
enable a person having ordinary knowledge in the field of the invention
to make and use the invention. When the nature of the invention permits,
a drawing or sketch should be included. 

PREPARATION OF THE DOCUMENT

To facilitate the PTO's electronic data capture and storage of the
Disclosure Document, it must be on white paper having dimensions not to
exceed 8 1/2 by 11 inches (21.6 by 28.0 cm.) with each page numbered. 
Text and drawings must be sufficiently dark to permit reproduction with
commonly used office copying machines.  Oversized papers, even if
foldable to the above dimensions, will not be accepted. Attachments such
as videotapes and working models will not be accepted and will be
returned.

OTHER ENCLOSURES

The Disclosure Document must be accompanied by a separate signed cover
letter stating that it is submitted by, or on behalf of, the inventor
and requesting that the material be received into the Disclosure
Document Program. The inventor's request may take the following form:

The undersigned, being the inventor of the disclosed invention, requests
that the enclosed papers be accepted under the Disclosure Document
Program, and that they be preserved for a period of two years.

The original submission will not be returned. A notice with an
identifying number and date of receipt in the PTO will be mailed to the
customer, indicating that the Disclosure Document may be relied on only
as evidence and that a patent application should be diligently filed if
patent protection is desired.

DISPOSITION

The Disclosure Document is retained by the PTO for 2 years. After that
time, it will be destroyed unless referred to in a separate letter in a
related patent application filed within the 2-year period. A letter must
be filed in the related patent application, identifying not only the
patent application but also the Disclosure Document by its title,
number, and date of receipt. Acknowledgment of such letters will be made
in the next official communication or in a separate letter from the PTO.
Unless it is desired to have the PTO retain the Disclosure Document
beyond the 2-year period, it is not required that it be referred to in a
patent application.

ACKNOWLEDGMENT

When a paper referring to a Disclosure Document is filed in a patent
application within 2-years after the filing of a Disclosure Document,
the examining group technical support staff member either prepares (1) a
memorandum indicating that a reference to Disclosure Document No. -- 
has been made in Patent Application No. -- , or (2) a copy of the paper
filed in the application referring to the Disclosure Document. The
memorandum or copy is forwarded to the Customer Contact Team of the
Office of Initial Patent Examination (OIPE).

Upon receipt, the Customer Contact Team of the OIPE prepares a retention
label (PTO-150) and attaches it to the Disclosure Document, so indicates
on the forwarded memo or copy,  and returns the memo or copy to the
group. The returned memo or copy is stapled to the inside left flap of
the file wrapper so that the examiner's attention is directed to it when
the next Office action is prepared. If prosecution before the examiner
has been concluded, a separate letter indicating that the Disclosure
Document will be retained should be sent to the applicant by the
examining group technical support staff member.

After the acknowledging letter is mailed, the paper number of the
acknowledgement is noted in the application file.  The returned memo or
copy is stapled to and retained with the original paper referring to the
Disclosure Document in the file wrapper .

FEE

The fee as set forth in  37 CFR 1.21(c) is $10. Full payment must
accompany the Disclosure Document when it is submitted to the PTO.

NOTICE TO INVENTORS

The 2-year retention period should not be considered to be a "grace
period" during which the inventor can wait to file his or her patent
application without possible loss of benefits. It must be recognized
that in establishing priority of invention an affidavit or testimony
referring to a Disclosure Document must usually also establish diligence
in completing the invention or in filing the patent application since
the filing of the Disclosure Document.

Inventors not familiar with the requirement of "diligence in completing
the invention" or "reduction to practice" under the U.S. patent law are
advised to consult an attorney or agent registered to practice before
the PTO.  A publication, Attorneys and Agents Registered to Practice
Before the U.S. Patent and Trademark Office, is available from the
Superintendent of Documents, U.S. Government Printing Office,
Washington, D.C. 20402.  Patent attorneys and agents may be found in the
telephone directories of most major cities. Also, many large cities have
associations of patent attorneys that may be consulted.

Inventors are also reminded that any public use or sale in the United
States or publication of the invention more than 1 year prior to the
filing of a patent application on that invention may prohibit the
granting of a patent on it.

There is a nationwide network of Patent and Trademark Depository
Libraries (PTDLs), which have collections of patents and patent-related
reference materials available to the public, including automated access
to PTO data bases.  Publications such as General Information Concerning
Patents are available at the PTDLs.  To find out the location of the
PTDL closest to you, please consult the complete listing of all PTDLs
that appears in every issue of the Official Gazette or call the PTO
General Information Services Division at (703) 308-HELP/4357 or
1-800-786-9199.  To ensure assistance from a PTDL staff member, you may
wish to contact a PTDL prior to visiting to learn about its collections,
services, and hours.

---SECTION---1711 U.S.-Philippines Search Exchange

The United States-Philippines search exchange program involves patent
applications filed in the United States which are subsequently followed
by corresponding applications filed in the Republic of the Philippines
and patent applications filed in the Philippines subsequently followed
by corresponding applications filed in the United States.

The program operates as follows:

The applicant files his or her application in the U.S. Patent and
Trademark Office which will process the application in the normal manner
and examine the application in the usual time sequence.

If the applicant should later file a corresponding application in the
Philippines Patent Office, he or she may elect to use the special filing
procedure.  Under this special filing procedure, applicant files his or
her application in the Philippines accompanied by a notice of election
to participate in the special procedure, which notice of election
contains a certification that the description (excluding references to
related applications), claims, and drawings are identical to those of
the corresponding application originally filed in the United States. 
The earlier filed application must be fully identified, and, in
applications without a claim of priority, a certified copy of the
earlier filed U.S. application must be submitted to the Philippines
Patent Office. In addition, applicant must also agree that all
amendments to his or her U.S. application will also be made with respect
to his or her application filed in the Philippines.

In the U.S. Patent and Trademark Office, applicant will regularly file
two copies of each amendment. One copy must be marked "Copy for
Philippines Patent Office." Upon termination of prosecution, the U.S.
Patent and Trademark Office shall remove all copies so marked from the
U.S. file and promptly forward the same to the Philippines Patent
Office.

Election forms for participation in this special program must be signed
in duplicate and simultaneously accompany the application to be filed in
the Philippines.

Upon receipt of properly filed notice of election, the Philippines
Patent Office will notify the U.S. Patent and Trademark Office of the
election by forwarding one copy of the election forms to the U.S. Patent
and Trademark Office.  The Philippines Patent Office will defer action
on the Philippines application pending receipt of information as to the
disposition of the application by the U.S. Patent and Trademark Office. 
If no such information is received by the Philippines Office within a
reasonable amount of time from the date of filing in the Philippines,
the Philippines Office may, either on its own initiative, or at
applicant's request, inquire as to the status of the U.S. application
and, if desired, proceed with its own independent examination.

Upon disposal of the application by the U.S. Patent and Trademark
Office, appropriate information will be sent to the Philippines Patent
Office which will include all necessary identifying data, whether
allowed or abandoned, notice of allowance, copies of documents cited
during examination, a copy of the last office action and, when
necessary, any earlier actions which may be included by reference in the
last action. The Philippines Office will then make their own complete
office action based upon the claims as amended with U.S. Patent and
Trademark Office, performing whatever checks desired and searching for
copending interfering applications. Alternatively, the Philippines may
request applicant to show cause why the results of the U.S. examination
should not be accepted in the Philippines.  All avenues of appeal will
remain open to the applicant.

Where copending applications are cited and applied during examination in
the U.S. Patent and Trademark Office, full examination will not be
forwarded to the Philippines Patent Office, and the fact that a U.S.
copending application was cited would be noted as a matter of
information, since such references are inapplicable in the Philippines.

Where the application originates in the Philippines Patent Office and is
subsequently filed in the U.S. Patent and Trademark Office, a similar
procedure as outlined above, consonant with U.S. law, will be followed.

It is believed that this program will facilitate the handling of U.S.
origin applications filed in the Republic of the Philippines resulting
in a savings in time and expense of prosecution to U.S. applicants. 

---SECTION---1720 Dissemination of Court and Board of Patent Appeals and
Interferences Decisions

COURT DECISIONS

The Office of the Solicitor forwards to the Office of the Assistant
Commissioner for Patents copies of all recent court decisions in patent
cases where a precedential opinion is issued.  The Office of the
Assistant Commissioner for Patents will routinely provide copies of
these opinions to Group Directors, the Patent Academy, and the Director
of the Office of Patent Quality Review.

Directors, in turn, are to make copies available to supervisors and
other individuals as the Director determines to be appropriate.
Directors are encouraged to discuss the contents of the opinions in
their staff meetings, particularly where such meetings are being held to
reinforce examination quality.

BOARD OF PATENT APPEALS AND INTERFERENCES DECISIONS

A decision rendered by the Board of Patent Appeals and Interferences
(Board) is returned to the examiner through the Group Director and the
examiner's supervisor. The examiner takes action consistent with the
decision rendered by the Board unless reconsideration of the Board
decision will be requested (MPEP Section  1214.04). The Director may
circulate and discuss the decision among some or all of the supervisors
in the Group, and the supervisors, in turn, may circulate the decision
among the examiners in their art units, depending on the subject matter
or issues in the decisions.

---SECTION---1721 Treatment of Court and Board of Patent Appeals and
Interferences Decisions Affecting Patent and Trademark Office Policy and
Practice

In the event the Board of Patent Appeals and Interferences (Board) or
court decision is one that significantly adds to the body of law by, for
example, addressing a new legal or procedural issue, or providing a new
interpretation of a prior decision, such a decision may result in an
internal PTO memorandum pointing out the significance of the decision to
the examination process.

When any examiner or supervisor in the Patent Examining Corps concludes
that a recent decision of the Board or a court affects existing PTO
policy or practice, he or she should bring the matter to the attention
of his/her Group Director through normal chain-of-command procedures.

When the Group Director believes that guidance to the Corps is warranted
as a result of a decision, the Director should consult with the Deputy
Assistant Commissioner for Patent Policy and Projects and provide a
draft of the guidance that is recommended as appropriate under the
circumstances. The Deputy Assistant Commissioner for Patent Policy and
Projects will then consult appropriate Office officials, as necessary,
to formulate a recommendation to the Assistant Commissioner for Patents
on the policy implications of the opinion.

It may be necessary for the Commissioner, Solicitor, Chief
Administrative Patent Judge, A/C for Patents, Deputy A/C for Patent
Policy and Projects, Deputy A/C for Patents and Director making the
recommendation to meet to review and discuss the policy ramifications of
the case enabling the Commissioner to decide how the PTO will proceed.

Communication of the decision on the policy implications of the court or
Board decision will normally take place by either notice in the Official
Gazette and/or via memorandum to PTO personnel. Ultimately, the policy
implications of the decision will be officially incorporated into the
Manual of Patent Examining Procedure and Patent Academy curriculum
materials during the next update cycle for these reference materials.

---SECTION---1730 Information Sources

IN GENERAL

General information about patents, trademarks, products and services
offered by the Patent and Trademark Office, and other related
information, can be obtained 7 days a week, 24 hours a day, by calling
PTO's automated message system at:

800-PTO-9199 or 703-308-HELP (FAX) 703-305-7786 (TDD) 703-305-7785

For other technical patent information needs, the Patent Assistance
Center can be reached through customer service representatives at the
above numbers, Monday through Friday (except federal holidays) from 8:30
a.m. to 5:00 p.m. EST/EDT.

For questions or concerns relating to other technical trademark matters,
the Trademark Assistance Center can be reached at 703-308-9000 or by
facsimile at 703-308-7016. 

In addition, the PTO web site (http://www.uspto.gov/) provides a wealth
of information to all users. Of particular interest is the General
Information page, which offers links to recent publications (including
Official Gazette notices back to 1964, the MPEP, press releases,
speeches, hearings, and public comments); a variety of searchable and
browsable general references (notably PTO addresses and telephone
numbers, an employee telephone locator, and the attorneys and agents
roster); and major outreach programs (such as the PTDL, Technology
Assessment and Forecast, and Public Search Room programs).  In addition,
the web site allows downloading of a variety of PTO forms (including PCT
forms), information on ordering copies of patents and trademarks, a list
of all current fees, access to various legal materials, links to related
web sites, etc.  The PTO web site also offers access to two database
collections, i.e., the PatBib Patent Database and the AIDS Patent
Database. The PatBib Patent Database provides the public with very
flexible and powerful searching of the first-page bibliographic
information and abstracts for all patents from January 1, 1976 to the
present. It is updated each Tuesday as the O.G. is issued. The AIDS
Patent Database is designed to provide AIDS researchers with a central
reference to related text and image patent data from selected U.S.,
European or Japanese Patent Office patents which may be of value in
their work. It is updated monthly, or as the contributing offices make
data available.

PCT

For questions and information concerning the Patent Cooperation Treaty
(PCT), the PCT Help Desk is available to provide assistance and may be
reached by telephone at (703) 305-3257 between the hours of 9:00 am and
4:30 pm (EST/EDT), Monday through Friday, or by facsimile at (703)
305-2919, 24 hours a day. In addition, helpful information is available
through the internet at the PCT Legal Office page
(http://www.uspto.gov/web/offices/pac/dapps/pct/) and at the World
Intellectual Property Office web site (http://www.wipo.org/).

PTO SEARCH AND INFORMATION RESOURCE FACILITIES

The following PTO search and information resource facilities are
accessible to the public:

(A) Patent Search Room (Crystal Plaza 3, 1A03) at (703) 308-0595

(Hours:  Weekdays, 8:00 a.m. to 8:00 p.m., EST/EDT);

(B) Patent Image Retrieval (Crystal Mall 1, 1A02) at (703) 308-6001

(Hours:  Weekdays, 8:00 a.m. to 8:00 p.m., EST/EDT);

(C) Patent Assignment Search Room (Crystal Plaza 3, 2C03) at (703)
308-2768

(Hours:  Weekdays, 8:30 a.m. to 5:00 p.m., EST/EDT); and

(D) Scientific and Technical Information Center (Crystal Plaza 3/4,
2C08) at (703) 308-0810

(Hours:  Weekdays, 8:30 a.m. to 5:00 p.m., EST/EDT) .

MISCELLANEOUS

For information and questions concerning recently filed patent
applications and filing receipts, contact the Customer Service Center of
the Office of Initial Patent Examination at (703) 308-1202 (hours:
weekdays, 8:30 a.m. to 5:00 p.m., EST/EDT. For receipt of mail only:
weekdays, 8:30 a.m. to 12 midnight, EST/EDT).  For information on the
status of a patent application, or to order file histories for
self-service copying, contact the File Information Unit at (703)
308-2733.

Inquiries regarding certified copies of documents, including patent
applications-as-filed, patent related file wrappers, patent copies, and
reproduced copies of individual replacement pages or previous revisions
of the MPEP, should be directed to the Certification Division at (703)
308-9726 or 1-800-972-6382.  Orders for certified copies may be placed
by facsimile when paying by VISA/Mastercard or PTO Deposit Account at
(703) 308-7048.  Orders for uncertified copies of patents may be placed
by phone at (703) 305-8716 or by fax at (703) 305-8759.

Information regarding maintenance fees may be obtained by contacting the
Status and Entity Division at (703) 308-5068.

For matters decided by the Office of Petitions, the appropriate PTO
personnel may be reached at (703) 305-9282 or by facsimile at (703)
308-6916.

Current patent classification information can be obtained by calling
(703) 305-5227.

To obtain a list of registered patent attorneys and agents for a
particular area, applicants may either write to the Commissioner of
Patents and Trademarks, Box OED, Washington, D.C., 20231, contact a
customer service representative through PTO's automated message system
(see "In General" above), or acquire the information from the PTO web
site.

For information regarding orders for the PatentIn software program, call
the Office of Electronic Information Products and Services at (703)
306-2600. For assistance using PatentIn, call (703) 287-0200.



