1700

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1700

1701
Examiners Not to Express Opinion on Valid-
ity

1701.01
Examiners Not To Testify as Patent Experts
1702
Restrictions on Examiners Resigning From
the Office

1703
Official Gazette

1704

Records Kept in Examining Groups

1705

Examiner's Work Report and Actions To Be
Counted
Disclosure Documents

1706

1710

U.S .- German Search Exchange

1710.01

U.S. Origin Application

1710.02
German Origin Application

1711
U.S .- Philippines Search Exchange

1712
U.S .- Swedish Search Exchange

## 1701 Examiners Not To Express Opin- ion on Validity [R-35]

Congress, in 35 U.S.C. 282, has endowed
every patent granted by the Patent Office with
a presumption of validity. Public policy de-
mands that every employee of the Patent Office
refuse to express to any person any opinion
or view as to the invalidity of any United
States Patent. The question of validity or in-
validity is exclusively a matter for the courts
to determine. Each member of the examining
corps is cautioned to be especially wary of any
inquiry from any person outside the Patent
Office (including any employee of another
government agency), the answer to which
might indicate that a particular patent should
not have been issued.

Further, when a field of search for an inven-
tion is requested, Patent Office employees should
routinely inquire whether the invention has
been patented.

Examiners are especially cautioned against
answering inquiries from any person outside the
Patent Office as to whether or not a certain
reference was considered and whether or not
a claim would have been allowed over that
reference. This applies to anything in the
patented file, including the extent of the field
of search and any entry relating thereto. The
record of a patented file must speak for itself.
Practitioners can be of material assistance in
this regard by refraining from making such in-
quiries of members of the examining corps.
Answers to inquiries of this nature must of

## Miscellaneous

necessity be refused, and such refusal should be
considered neither discourteous nor an expres-
sion of opinion as to validity. Searches sug-
gested to members of the public who conduct
validity searches might well serve as a basis
for concluding that the examiner who examined
the application during its prosecution over-
looked a pertinent area of prior art during his
search. This might adversely affect the pre-
sumption of validity in the court of patent
litigation.

The examiner who offers suggestions as to
fields of search might well find himself in a
position where his offer to help might lead to
statements made by him which adversely re-
flect on the patent itself. These statements,
while not part of the Patent Office written rec-
ord, may result in the examiner being sought for
testimony in connection with litigation result-
ing from the issuance of that patent. While
§ 1701.01 points out that the testimony of ex-
aminers can be taken by deposition in appro-
priate situations, the circumstances noted are
not appropriate. Examiner's testimony is lim-
ited to factual amplification of the written rec-
ord established during the application's prose-
cution history. In validity search situations,
comments made by the examiner occur after the
fact (issuance of the patent) and could only
lead to improper examiner testimony since they
amount to "second guessing" of the original
examiner's work methods and professional judg-
ment. As pointed out above, the determination
of validity of a United States patent is strictly
a matter for determination by competent
judicial authority.

### 1701.01 Examiners Not To Testify as Patent Experts [R-40]

Inasmuch as public policy does not permit
examiners to decide, as judges in the Patent
Office, questions upon which they have been
retained to give opinions as expert witnesses
in patent cases in the courts, every examiner
who shall testify as an expert in a patent case
pending in any court will be dismissed, unless
he shall have so testified involuntarily, upon
'compulsion by competent judicial authority,
and without retainer or preparation.

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Whenever an examiner is asked or sub-
poenaed to testify in a suit concerning a pat-
ent, trademark registration, or application for
either, he is directed to report that fact im-
mediately to the Solicitor. Where the suit in-
volves a patent or an application for a patent,
the examiner must also promptly notify the
Ofice of the Deputy Assistant Commissioner
for Patents.

Also, examiners are reminded that, in view
of the long established policy of the Patent
Office to refuse to permit members of the staff
of the Patent Office to testify in patent suits,
they should, before allowing an application, de-
termine that the written record is accurate and
complete.

Patent examiners are forbidden to testify as
patent experts or to express opinions, in testi-
mony or otherwise, as to the invalidity of any
issued patent. Patent examiners have, in con-
nection with litigation involving patent valid-
ity, been called to testify on factual matters. In
those cases, the practice has been to permit the
examiner to testify only upon the issuance of a
subpoena.

However, under current practice, patent ex-
aminers are permitted to testify on deposition
in patent suits, without the need for a subpoena,
provided the following conditions are satisfied :

1\) The party proposing to take the testi-
mony will state in writing, that the questions
to be asked of the examiner will be phrased to
comply with the permissible scope of inquiry
as outlined in the protective orders contained
in the Court opinions in In re Mayewsky, 162
USPQ 86, 89, and Shaffer Tool Works v. Joy
Manufacturing Co., 167 USPQ 170, 171 :

** * * the scope of the oral depositions
of the patent examiners is hereby 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 patent examiners in act-
ing upon the patent applications maturing
into the patent [in suit ]." 167 USPQ 171.

2\) That in addition to complying with the
requirements of Rule 30 of the Federal Rules
of Civil Procedure, the party taking the testi-
mony will agree to give notice of the taking
of the deposition of the patent examiner to
the Solicitor, at least thirty days prior to the
date on which the taking of the deposition is
desired.

3\) That the party taking the deposition
arrange with the Solicitor to notice the dep-
osition at a place convenient to the Patent
Office.

If the party desiring to take the testimony of
the examiner does not agree to the conditions
enumerated, the Patent Office will not permit

the examiner to be deposed without a subpoena
and compliance with the procedure set forth in
Section 7.02, Department of Commerce Admin-
istrative Order 205-12, June 29, 1967 as
amended April 10, 1970. That section states :

In any case where it is sought by subpoena,
order or other compulsory process or other
demand of a court or other authority (herein-
after referred to as a "demand") to require
the production or disclosure of any record in
the files of the Department of Commerce or
other information acquired by an officer or
employee of the Department as a part of the
performance of his official duties or because
of his official status, the matter shall be im-
mediately referred for determination to the
appropriate official described in subsection
4.01 of this order. If such official has discre-
tion with respect to disclosure and he deter-
mines that it would be improper to comply
with the demand, or if he has no discretion
with respect to disclosure, the matter shall be
promptly referred to the Secretary of Com-
merce for final determination. Unless and
until the Secretary determines that the rec-
ords or information should be produced, the
officer or employee who appears in answer to
the demand shall inform the court or other
authority (a) that the section 7 of this order
prohibits the officer or employe from produc-
ing or disclosing the records or other infor-
mation demanded without the prior approval
of the Secretary of Commerce, and (b) that
the demand has been, or is being, as the case
may be, referred for the prompt consideration
of the Secretary. The officer or employee shall
also provide the court or other authority with
a copy of the regulations prescribed in this
section 7 of this order, and shall respectfully
request the court or other authority to stay
the demand pending the receipt of instruc-
tions or directions from the Secretary of
Commerce concerning the demand.

See also Monsanto Company v. Dawson
Chemical Company et al., 176 USPQ 349
(1972), Standard Packaging Corporation v.
Curwood, Inc., 180 USPQ 235 (1973) and
Fischer & Porter Company v. Corning Glass
Works, 181 USPQ 399 (1974).

# 1702 Restrictions on Examiners Re- signing From the Office [R-31]

Extract from Rule 341, Registration of Attorneys
and Agents. (g) Former examiners. No person who
has served in the examining corps of the Patent Office
will be registered after termination of his services, nor,
if registered before such service, be reinstated, unless
he undertakes (1) not to prosecute or aid in any
manner in the prosecution of any application pending

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in any examining group during his period of service
therein; and (2) not to prepare or prosecute nor to
assist in any manner in the preparation or prosecution
of any application of another filed within two years
after the date he left such group, and assigned to such
group, without the specific authorization of the Com-
missioner. Associated and related classes in other
groups may be required to be included in the under-
taking or designated classes may be excluded. In case
application for registration or reinstatement is made
after resignation from the Office, the applicant will not
be registered, or reinstated, if he has prepared or
prosecuted, or assisted in the preparation or prosecu-
tion of any such application as indicated in this para-
graph. (See further 18 U.S.C. 207).

See also § 309.

# 1703 The Official Gazette [R-46]

The Patent Official Gazette reports every
Tuesday the patents, and design patents issued
and defensive publications published on that
day. As to each patent, the following informa-
tion is given :

(1) the name and (2) the city and state of
residence of the applicant with the Post Office
address in the case of unassigned patents, and
(3) the same data for the assignee, if any, (4)
the filing date, and (5) the serial number of the
application, (6) the patent number, (7) the title
of the invention, (8) the number of claims, (9)
the U.S. classification by class and subclass,
(10) a selected figure of the drawing, if any,
except in the case of a plant patent. (11) a claim
or claims. (12) international classification, (13)
U.S. parent application data. if any, and (14)
foreign priority application data, if any. In the
case of a reissue patent there are published the
additional data of the number and date of the
original patent and original application; and
in the case of a design patent the term of the
patent.

4

The Patent Official Gazette also includes
notices of patent and trademark suits,
indexes of patents, disclaimers filed,
Certificates of Correction issued, list of patents
available for license or sale, and general infor-
mation such as orders, notices, changes in rules,
changes in classification, certain adverse deci-
sions in interferences. the condition of work in
the Office, disbarment and registration of at-
torneys, and notices to parties not reached by
-mail.

Trademark Official Gazette. The official
journal of the Patent Office relating to trade-
marks. Published every Tuesday, it contains an
illustration of each trademark published for op-
position, a list of trademarks registered, classi-
fied list of registered trademarks and Patent
and Trademark Office noties.

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

# 1704 Records Kept in Examining Groups [R-46]

The principal records kept in the examining
groups are two sets of cards, serial register
form PO-205 which are arranged numerically
and docket record form PO-206, of which those
awaiting action are arranged by individual ex-
aminers. Each card contains data concerning
the applications that have been assigned to
the groups, identified by name of applicant, title
of invention, serial number and filing date. No-
tation of attorneys is also made. Each set of
cards also shows the name of the examiner to
whom the examination is entrusted or the
assigned docket designation and the class and
subclass considered most pertinent for examina-
tion, the successive actions taken, and finally the
patenting or abandonment or transfer of the
case.

Miscellaneous records are also kept relating
to matters such as cases on appeal, cases in-
volved in interference, patentability report
cases temporarily in or out of the groups,
cases involving classification questions and ap-
plications or references charged out.

# 1705 Examiner's Work Report and Actions To Be Counted Thereon [R-46]

## MARKING ACTION CARDS

The following are instructions for complet-
ing the mark sense action cards :

Employee number-If the number has less
than five digits, use leading zeros. For example,
employee number 3781 is marked-03781.

Group-Use first two numbers, for example,
for Group 320, mark-32.

Action-For final rejections mark "FIN.
REJ.".

For allowances mark "=".

For all other actions mark "other
action".

Action number-Prepunched on PO-525,
use card number corresponding to action num-
ber. Mark the action number on all other action
cards.

Art Unit-Use last digit of Group Art Unit
number. For example, for Group Art Unit 323,
mark --- 3.

Class-Mark all three columns. If the class
has less than 3 digits, mark leading zeros to

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complete a 3-digit number. Thus, Class 28 is
marked -028.

Subclass-Always mark the first three col-
umns. If the subclass has only one or two digits,
use leading zeros. Thus, subclass 3 is marked
-003.

If a decimal number is a part of the subclass,
include the decimal numbers, but do not mark
trailing zeros after the decimal number. For
example, subclass 32.8 would be marked -032.8.

Ignore any alpha characters in the subclass
number. For example, subclass 131.15C would
be marked as -131.15.

Classification is to be sense marked on :

1\. PO-525 and PO-533 cards for all first ac-
tions.

2\. PO-525, PO-526, and PO-533 cards for
disposals (allowances, abandonments, and ex-
aminer's answers).

Column 11- Column 11 is the one adjacent to
the extreme right column (column 12). Column
11 is also above numerals 76 and 77 at the very
bottom of the cards.

Column 11 is used in two instances :

1\. Mark -0- if the action is a rejection other
than a final rejection or a supplemental action.

2\. Mark -1- if the action is a SECOND
OR SUBSEQUENT ACTION in the case and
the first action on the merits.

3\. It is no longer necessary to mark -9 -- if
the action was made on overtime. Therefore,
-9-should be left blank.

Column 12 -- Column 12 is the extreme right
hand column above numerals 79 and 80 at the
bottom of the card.

1\. Mark-0- if the action is limited to a re-
quirement for restriction.

2\. Mark -1- if the action is an advisory
action after final rejection.

3\. Mark -2- if the action is an ex parte
Quayle action.

4\. Mark -3- if the action is an examiner's
answer to an appeal brief.

5\. Mark -4- if the action involves an inter-
ference matter such as a letter suggesting claims,
declaration or decision on motion.

6\. Mark -5- if the action acknowledges an
express abandonment.

7\. Mark -6- for miscellaneous actions.

8\. It is no longer required that -9- be
marked for all actions made after a notice of
appeal has been filed in the case. Therefore, line
-9- should not be marked.

## SERIES CODE

For those action cards for which the series
code and serial number are not prepunched and
must be handwritten in ink (the Case Action
Substitution card (PO-533). the Case Action/

Case Disposition Correction Request form
PTO-1314, the Case Disposition Record card
(PO-526), write the appropriate application
number series code in the box to the left of the
serial number box as follows :

A. For Invention, Plant, and Reissue Applica-
tions :

SERIES CODE:

Application
series

3
If filing date is prior to Janu-
ary 1, 1960.

4
If filing date is January 1, 1960
through December 31, 1969.

5
If filing date is January 1, 1970
or later.

B. For Design Applications :

SERIES CODE:

Application
series

4
If "D" precedes serial number.

5
If filing date is January 1, 1971
or later or "D" does not pre-
cede serial number.

The determination of the correct series code
must be made solely on the basis of filing date of
the application. Serial number form and size,
file wrapper color, type, and printed statement
of series do not reliably indicate proper applica-
tion number series.

Series code and serial number are prepunched
in the Case Action Record Card (PO-525).
However, for the other action cards, Case Ac-
tion Substitution (PO-533), Case Disposition
Record (PO-526), the series code and serial-
number are not prepunched and must be hand-
written in ink.

# SERIAL NUMBER

When recording serial number, there must be
6 digits. Thus, if serial number is less than
100,000, use lead zeros to complete a 6-digit num-
ber, e.g., for serial number 2,345, record 002,345
on the cards.

For design applications do not record the "D"
even though it is part of the serial number.

# SUBMITTING ACTION CARDS

All action cards (especially the Case Action
Cards, PO-525's) should be submitted promptly
with the application upon completion of an
action since pickup of these cards from the
Group clerks is on a daily basis.

# SUGGESTIONS

The following suggestions are made relative
to execution of the sense marking on the com-
puter "action cards."

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Use only the electrographic pencils. Ordinary
or colored pencils do not contain enough
graphite to produce a sufficiently dark dense
mark to conduct electricity.

Make a dense firm mark with a pencil having
a moderately sharp point. A broad mark may
not obtain a continuous unbroken deposit of
graphite. Examiners and clerks should make
two strokes within each space.

Mark on a hard smooth surface. Avoid mark-
ing on a soft surface such as a blotter, etc.

Confine the mark to the space. Avoid a span
which is either too short or too long. When the
marked cards pass through the Reproducing
Punch, three wire brushes sense the mark in the
middle as well as at each end. Marks which are
are too short will not be punched; those which
are too long are likely to invade an adjoining
vertical column.

Mark each space individually. Although it is
possible to mark two or more spaces with an
extended pencil stroke, the quality of the mark
is impaired.

Do not mutilate or staple the tab cards since

a hole in the card will cause mechanical
difficulties.

Never write in a mark sensing area. Use only
ink when writing on the action cards and write
only in the non-marking area of the card.

# REPORTS

All reporting of examiner's production,
docket, and time activities is on a bi-weekly
basis corresponding to the period covered by the
Time and Attendance Reports, PO-516.

The Office of Computer Services generates
the following reports for each art unit :

Examiner's Bi-Weekly Time and Activity
Report. This report is based on the Examiner's
Case Action Record, Case Disposition, Substitu-
tion, Case Action/Case Disposition Correction
Request, and Examiner's Bi-Weekly Time Rec-
ord Cards, PO-525. PO-526 and PO-533,
PTO-1314, and PTO-523 respectively.

Examiner's Bi-Weekly Docket Status Report.
this report covers information regarding the
new, amended and rejected applications await-
ing action.
1

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The dates of the various desks shall be ad-
vanced and reported as the actions are counted.
The oldest dates of the group reported shall not
be advanced except as the actions are mailed.

# COUNTING OF ACTIONS

## ACTIONS COUNTED

1\. Regular actions in new and amended
cases including :

(a) Requirements for restriction

(b) Letters or allowances by the examiner
as the result of the examination of a new ap-
plication or the reconsideration or reexamina-
tion of an amended application

(c) Requirements for formal changes or
corrections

(d) Actions of the examiner applying or
carrying into effect final decisions in inter-
ference, either on motions or on priority

(e) Actions on cases remanded by the
Board of Appeals for reconsideration in view
of affidavits or proposed further amendments
by applicants.

2\. One action for each application which
consists only in suggesting claims for inter-
ference and one for each application in declar-
ing each interference.

3\. Examiner's statements in answer to peti-
tions from his actions.

4\. Examiner's answers on appeals.

5\. Decisions on motions in interference.

6\. Letters advising of entry or nonentry of
amendment after final action.

7\. Letter advising applicant that express
abandonment has taken place and the file will
be sent to the Abandoned Files Unit in due
course.

C

8\. One action for each application when for-
warding a letter for declaration or redeclara-
tion of an interference.

Where more than one amendment is filed in
any case before it is reached for consideration of
the first of such amendments, only one action
will be counted in connection with all such
amendments.

## ACTIONS NOT COUNTED

The following should not be counted as ac-
tions: (1) Examiner's Amendments; (2) sup-
plemental actions citing additional references
or correcting the data of references of record;
(3) letters acknowledging receipt of communi-
cations (new or supplemental oaths, orders for
corrections of drawings, etc.), which do not
bring the application up for action : (4) letters
stating that the Notice of Allowance will be
sent in due course; (5) answers to petitions

to revive or to make cases special, amendments
under Rule 312, and to status letters.

Transfers of individual cases and patent-
ability reports are not counted as actions, but
credit is given for the time spent.

Examiners are expected to make a reason-
ably careful examination of applications when
they are first received to determine the proper
classification before entering them on the
register.

Non-examining time is listed on Examiner's
Periodic Record of "Other" Time PO-690E.
Examiners should check this in order to make
sure that they are properly credited with such
time.

## COUNTING OF DISPOSALS

Examiners receive credit for a disposal upon
submission of a first examiner's answer pre-
pared in an appealed application. A Case Action
Record Card (PO-525) should be marked in
block numbered 3, extreme right hand column
and turned in with the examiner's answer.

An examiner's "disposal" count consists of
three items: (1) allowances, (2) abandon-
ments, and (3) examiner's answers. These same
items constitute the "disposals" for performance
evaluation of examining art units and groups.
However, disposals at the Office level consists
only of allowances and abandonments.

For abandonments, the actual date of aban-
donment must be written in ink above the em-
ployee number on the Case Disposition Card,
PO-526.

After the first examiner's answer is submitted,
the group clerical section should remove the
remaining Case Action Cards from the file
wrapper. No further disposal credit will be
given.

In order to assure that errors be minimal, it
is essential that the action cards be carefully
mark sensed. The following are common errors
which occur :

1\. Card mark sensed too light.

2\. Incomplete or no class and subclass on first
action, allowance, abandonment or examiner's
answer card.
]

3\. A mark in the last two columns of an
abandonment card.

4\. Group art unit number invalid.

5\. Failure to identify type of "other action".

### 1706 Disclosure Documents [R-46]

The Patent and Trademark Office accepts and
preserves, for a limited time. "Disclosure Docu-
ments" as evidence of the dates of conception
of inventions.

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## THE PROGRAM

A paper disclosing an invention and signed
by the inventor or inventors may be forwarded
-to the Patent and Trademark Office by the in-
ventor (or by any one of the inventors when
there are joint inventors), by the owner of the
invention, or by the attorney or agent of the
inventor(s) or owner. It will be retained for
two years and then be destroyed unless it is
referred to in a separate letter in a related ap-
plication within two years.

The Disclosure Document is not a patent ap-
plication, and the date of its receipt in the
Patent and Trademark Office will not become
the effective filing date of any patent applica-
tion subsequently filed. However, like patent
applications, these documents will be kept in
-confidence by the Patent and Trademark Office
until a patent is granted.

This program does not diminish the value of
the conventional witnessed and notarized rec-
ords as evidence of conception of an invention,
but it should provide a more creditable form of
evidence than that provided by the popular
practice of mailing a disclosure to oneself or an-
other person by registered mail.

A Disclosure Document is available to the
public when an application which refers to it
issues as a patent.

### CONTENT OF DISCLOSURE DOCUMENT

Although there are no restrictions as to con-
tent and claims are not necessary, the benefits
afforded by the Disclosure Document will de-
pend directly upon the adequacy of the dis-
closure. Therefore, it is strongly urged that the
document contain a clear and complete explana-
tion of the manner and process of making and
using the invention 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. The use
or utility of the invention should be described,
especially in chemical inventions.

## PREPARATION OF THE DOCUMENT

The Disclosure Document must be limited to
written matter or drawings on paper or other
thin, flexible material, such as linen or plastic
drafting material, having dimensions or being
folded to dimensions not to exceed 81/2 by 13
inches (21.6 by 33 cm.). Photographs also are
acceptable. Each page should be numbered.
Text and drawings should be sufficiently dark
to permit reproduction with commonly used
office copying machines.

## OTHER ENCLOSURES

In addition to the fee described below, the
Disclosure Document must be accompanied by a
stamped, self-addressed envelope and a separate
paper in duplicate, signed by the inventor, stat-
ing that he is the inventor and requesting that
the material be received for processing under the
Disclosure Document Program. The papers will
be stamped by the Patent and Trademark Office-
with an identifying number and date of receipt,
and the duplicate request will be returned in
the self-addressed envelope together with a no-
tice indicating that the Disclosure Document
may be relied upon only as evidence and that a
patent application should be diligently filed if
patent protection is desired. The inventor's re-
quest may take the following form :

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

## DISPOSITION

The Disclosure Document will be preserved
in the Patent and Trademark Office for two-
years and then will be destroyed unless it is
referred to in a separate letter in a related pat-
ent application filed within the two-year period.
The Disclosure Document should be referred to
in a separate letter filed in a pending applica-
tion by identifying the Document by its title,
number, and date of receipt. Acknowledgment
of receipt of such letters is made in the next offi-
cial communication or in separate letter from
the Patent and Trademark Office. Unless it is-
desired to have the Patent and Trademark Of ---
fice retain the Disclosure Document beyond the
two-year period, it is not required that it be
referred to in a patent application.

## ACKNOWLEDGMENT

When a paper referring to a Disclosure Doc-
ument is filed in a patent application within
two years after the filing of a Disclosure Docu-
ment, the group clerk either prepares (1) a
memorandum indicating that a reference to
Disclosure Document No.
has been made
in application Serial 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 Head of the Cor-
respondence and Mail Division.

Upon receipt, the Correspondence and Mail
Division prepares a retention label (PO-150)
and attaches it to the Disclosure Document, in-
dicates on the forwarded memo or copy that

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the retention label has been applied 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 at-
tention is directed to it when he prepares the
next Office action. 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 group clerk.

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

FEE

A fee of $10 is charged for filing a Disclosure
Document. Payment must accompany the Dis-
closure Document when it is submitted to the
-Patent and Trademark Office.

## WARNING TO INVENTORS

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

Inventors are also reminded that any public
use or sale in the United States or publication of
the invention anywhere in the world more than
one year prior to the filing of a patent applica-
tion on that invention will prohibit the granting
of a patent on it.

If the inventor is not familiar with what is
considered to be "diligence in completing the
invention" or "reduction to practice" under the
patent law, or if he has other questions about
-patent matters, the Patent and Trademark Of-
fice advises him to consult an attorney or agent
registered to practice before the Patent and
Trademark Office. A Directory of Registered
-Patent Attorneys and Agents Arranged by
States and Counties is available for $2.85 from
the Superintendent of Documents, U.S. Govern-
ment 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 which may be consulted.

## 1710 U.S .- German Search Exchange [R-46]

The German and U.S. patent offices have
terminated the program for exchanging search
results in cases where applications for the same
inventions are filed in both countries.

The United States Patent and Trademark
Office has not requested any search results on
foreign counterparts from the Patent Office of
the Federal Republic of Germany since July 18,
1975.

The United States Patent and Trademark
Office will not furnish any search reports to the
German Patent Office after December 31, 1975.

## 1711 U.S .- Philippines Search Ex- change [R-46]

The United States-Philippines search ex-
change program involves patent applications
filed in the United States which are subse-
quently followed by corresponding applications
filed in the Republic of the Philippines and pat-
ent applications filed in the Philippines subse-
quently followed by corresponding applications
filed in the United States.

The program will operate as follows:

The applicant will file his 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 correspond-
ing application in the Philippines Patent Office,
he may elect to use the special filing procedure.
Under this special filing procedure, applicant
files his application in the Philippines accom-
panied by a notice of election to participate in
the special procedure; which notice of election
contains a certification that the description (ex-
cluding references to related applications).
claims and drawings are identical to those of
the corresponding application originally filed
in the United States. The earlier filed applica-
tion must be fully identified; and, in applica-
tions without a claim of priority, a certified copy
of the earlier filed U.S. application must be sub-
mitted to the Philippines Patent Office. In addi-
tion, applicant must also agree that all amend-
ments to his U.S. application will also be made
with respect to his application filed in the Phil-
ippines.

In the U.S. Patent and Trademark Office, ap-
plicant will regularly file two copies of each
amendment, one copy must be marked "Copy
for Philippines Patent Office." Upon termina-
tion of prosecution the U.S. Patent and Trade-
mark Office shall remove all copies so marked

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from the U.S. file and promptly forward the
same to the Philippines Patent Office.

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

Upon receipt of properly filed notice of elec-
tion, 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 ap-
+plication 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 Philip-
pines, 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 ex-
amination.

Upon disposal of the application by the U.S.
+Patent and Trademark Office, appropriate in-
formation will be sent to the Philippines Patent
Office which will include all necessary identify-
ing 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 the U.S. Patent and Trademark
Office, performing whatever checks desired and
search for copending interfering applications.
Alternatively, the Philippines may request ap-
plicant 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 infor-
mation, since such references are inapplicable
in the Philippines.

Where the application originates in the Phil-
ippines 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.

Election forms for participation in this spe-
cial program are now available from The
Foreign Exchange Unit.

## 1712 U.S .- Swedish Search Exchange [R-46]

A program for the exchange of search results
between the patent offices of Sweden and the
United States has been terminated. The United
States Patent and Trademark Office has not re-
quested any search results on foreign counter-
parts of United States applications from
Sweden since July 18, 1975.

47

The United States Patent and Trademark
Office will not furnish any search reports to
Sweden of United States applications which are
the counterparts of applications filed in Sweden
after December 31, 1975.

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