Practitioner’s Manual of Patent Examining Procedure


First published in July 2007, the Practitioner’s Manual of Patent Examining Procedure is a “go to” resource for all patent practitioners. The 2009 update is now available!

 
The Practitioner’s Manual of Patent Examining Procedure interprets and annotates the U.S. Patent and Trademark Office Manual of Patent Examining Procedure with insights gained over years of practice by Cheryl H. Agris, the principal author and contributing authors Brenda Pomerance of the Law Office of Brenda Pomerance, Amy Gallup Klann, Ph.D., Shilpa Patel, Ph.D. and Thomas Burrows, M.D., all of Darby and Darby, P.C. and Robert Levy of Thomson Licensing.  Author comments, practice references and other links thoroughly explain the practices and procedures underpinning the application process.
 
Thomson-Reuters, the nation’s foremost legal publisher, publishes the Practitioner’s Manual of Patent Examining Procedure in a three-volume edition.  The Practitioner’s Manual of Patent Examining Procedure is also available online Westlaw under the database identifier PMPEP.  It is supplemented at least annually.
 
The Practitioner’s Manual of Patent Examining Procedure contains the full text of the 8th Edition, Revision #6 of the Manual of Patent Examining Procedure (MPEP) for single source research.  It provides patent practitioners with perspective and direction that will allow use of the MPEP to its fullest.  The author comments show how the MPEP can be used to overcome objections and rejections during the prosecution of a patent application and highlights best practices that are most useful when preparing a patent and during special situations such as interference, reexamination and issue proceedings.  The Practice References provide references to recent relevant case law and secondary references.  To see a sample section of the Practitioner’s Manual of Patent Examining Procedure with representative Author Comments and Practice References, click on the following link §2112 Requirements of Rejection Based on Inherency; Burden of Proof 
 
The April 2009 revision incorporates:

• recent cases such as the United States Supreme Court decision of KSR Intern. Co. v. Teleflex, Inc and subsequent Federal Circuit and Board of Patent Appeals and Interferences Decisions and the Federal Circuit Court Decisions McKesson Information Solutions v. Bridge Medical, Inc. and Nilssen v. Osram Sylvania, Inc.;
• statutory and rule changes (April 2007 PCT rule changes)
that occurred after the last revision of the MPEP to assure that you have the most current standards.
 
As shown in the Chapter Listings below, the Chapters correspond to the government manual for easy reference and fast research.
 
• Secrecy, Access, National Security, and Foreign Filing
• Types, Cross-Noting, and Status of Application
• Ownership and Assignment
• Representative of Inventor or Owner
• Receipt and Handling of Mail Papers
• Parts, Form, and Content of Application
• Examination of Applications
• Restrictions in Applications Filed Under 35 U.S.C. 111; Double Patenting
• Prior Art, Classification, Search
• Matters Decided by Various U.S. Patent and Trademark Office Officials
• Statutory Invention Registration (SIR) and Pre-Grant Publication (PG Pub)
• Appeal
• Allowance and Issue
• Correction of Patents
• Design Patents
• Plant Patents
• Miscellaneous
• Patent Cooperation Treaty
• Protest
• Duty of Disclosure
• Patentability
• Citation of Prior Art and Ex Parte Reexamination of Patents
• Interference Proceedings
• Biotechnology
• Maintenance Fees
• Optional Inter Partes Reexamination
• Patent Terms and Extensions
•  Appendix I- Partial List of Trademarks
• Appendix II- List of Decisions Cited
• Appendix L- Patent Laws
• Appendix R- Patent Rules
• Appendix T- Patent Cooperation Treaty
• Appendix Al- Administrative Instructions under the PCT
• Appendix P- Paris Convention
• Table of Laws and Rules
• Index
 
For information from Thomson Reuters on ordering a hard copy of the Practitioner’s Manual of Patent Examining Procedure click here

 


The Law Offices of Cheryl H. Agris, Ph.D, PC assists clients with a wide range of patent and trademark related matters including clearance, opinions, preparation, and prosecution as well as transactional matters such as license agreements, assignment of rights and confidentiality agreements. Dr. Agris also provides arbitration and mediation services. The firm is based in the greater New York City area and serves clients in the US and throughout the world.


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