Manual of Patent Examining Procedure - MPEP
700 Examination of Applications
707.05(a) Copies of Cited References
Copies of cited foreign patent documents and non-patent literature references (except as noted below) are automatically furnished without charge to applicant together with the Office action in which they are cited. Copies of the cited references are also placed in the application file for use by the examiner during the prosecution. Copies of U.S. patents and U.S. patent application publications are not provided in paper to applicants and are not placed in the application file.
Copies of references cited by applicant in accordance with MPEP § 609, § 707.05(b) and § 708.02 are not furnished to applicant with the Office action. Additionally, copies of references cited in continuation applications if they had been previously cited in the parent application are not furnished. The examiner should check the left hand column of form PTO-892 if a copy of the reference is not to be furnished to the applicant.
Copies of foreign patent documents and nonpatent literature (NPL) which are cited by the examiner at the time of allowance will be furnished to applicant with the Office action, and copies of the same will also be retained in the file. For Image File Wrapper (IFW) processing, see IFW Manual section 3.7. This will apply to all allowance actions, including first action allowances and Ex Parte Quayle actions.
In the rare instance where no art is cited in a continuing application, all the references cited during the prosecution of the parent application will be listed at allowance for printing in the patent.
To assist in providing copies of , or access to, references, the examiner should:
(A) Type the citation of the references on form PTO-892, "Notice of References Cited" using OACS ;
(B) Place the form PTO-892 in the front of the file wrapper;
(C) Include in the application file wrapper all of the references cited by the examiner which are to be furnished to the applicant (for Image File Wrapper (IFW) processing, see IFW Manual);
(D) Turn the application in to the technical support staff for counting. Any application which is handed in without all of the required references will be returned to the examiner. The missing reference(s) should be obtained and the file returned to the technical support staff as quickly as possible. For Image File Wrapper (IFW) processing, see IFW Manual section 3.7.
In the case of design applications, procedures are the same as set forth in MPEP § 707.05 (a)-(g) .
¶ 7.82.03 How To Obtain Copies of U.S. Patents and U.S. Patent Application Publications
In June 2004, the USPTO ceased mailing paper copies of cited U.S. patents and U.S. patent application publications with all Office actions. See "USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies," 1282 O.G. 109 (May 18, 2004). Foreign patent documents and non-patent literature will continue to be provided to the applicant on paper.
All U.S. patents and U.S. patent application publications are available free of charge from the USPTO web site (www.uspto.gov/patft/index">
STEPS TO USE THE E-PATENT REFERENCE FEATURE
Access to Private PAIR is required to utilize E-Patent Reference. If you do not already have access to Private PAIR, the Office urges practitioners and applicants not represented by a practitioner to: (1) obtain a no-cost USPTO Public Key Infrastructure (PKI) digital certificate; (2) obtain a USPTO customer number; (3) associate all of their pending and new application filings with their customer number; (4) install free software (supplied by the Office) required to access Private PAIR and the E-Patent Reference; and (5) make appropriate arrangements for Internet access.
Instructions for performing the 5 steps:
Step 1: Full instructions for obtaining a PKI digital certificate are available at the Office's Electronic Business Center (EBC) web page (www.uspto.gov/ebc/downloads">