707.05(a) Copies of Cited References [R-07.2022]

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byChhabra Law Firm

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 be retained in the file wrapper. This will apply to all allowance actions, including first action allowances and Ex ParteQuayle 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 Official Correspondence;
  • (B) Include, in the action folder all of the references cited by the examiner which are to be furnished to the applicant.
  • (C) After any necessary review has taken place, forward the action to the TC mailbox for counting. Any application which is submitted 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.

In the case of design applications, procedures are the same as set forth in MPEP §§ 707.05(a) – 707.05(g).

¶ 7.82.03 How To Obtain Copies of U.S. Patents and U.S. Patent Application Publications

Immediately below this section is a citation to U.S. patent(s) and/or U.S. patent application publication(s).

The USPTO does not provide copies of U.S. patents or U.S. patent application publications with Office actions. Reviewing the U.S. patent(s) and/or U.S. patent application publication(s) cited below is important in deciding how to respond to the Office action. To obtain copies of the cited U.S. patent(s) and/or U.S. patent application publication(s), any of the following options may be used, free of charge:

  • 1) Patent Center (for all users if this application is published; for registered users associated with this application if this application has not published) — A link to Patent Center is available at www.uspto.gov/PatentCenter. To obtain the below cited U.S. patent(s) or U.S. patent application publication(s), open Patent Center. Enter the present application number (Application #) in the search box and then select the search button (magnifying glass). Once the “Application Data” is retrieved, select the “Display References” link on the left side of the screen. With the “U.S. Patent Documents” tab selected, select “View” next to the document which cites the desired U.S. patent(s) and/or U.S. patent application publication(s). Select the “PDF” link next to each desired U.S. patent and/or U.S. patent application publication to download the relevant document(s). Information on becoming a registered user can be found at www.uspto.gov/patents/apply/applying-online/getting-started-new-users. For additional information regarding Patent Center or becoming a registered user, contact the Electronic Business Center at 1-866-217-9197 (toll-free), 571-272-4100 (local), or by email at ebc@uspto.gov;
  • 2) Patent Public Search tool (for all users) — A link to the Patent Public Search tool is available at www.uspto.gov/PatentPublicSearch. To find a U.S. patent or U.S. patent application publication, open the Patent Public Search tool by selecting “Start search”. Type the U.S. patent or U.S. patent application publication number in the “Search” panel without any punctuation and followed by a “.pn.”. For example, for U.S. Patent No. 10,000,000 or U.S. Publ. No. 2016/0266243, one would type “10000000.pn.” or “20160266243.pn.”, respectively. Then select the “Search” button. The U.S. patent or U.S. patent application publication will be displayed in the “Document Viewer” panel in text view. To view the images of the U.S. patent or U.S. patent application publication, select the icon in the top left of the “Document Viewer” panel that looks like a camera on top of a “T”. The pages of the U.S. patent or U.S. patent application publication can be navigated by using the next page and previous page arrows in the top left of the “Document Viewer” panel. Additional information and support are available at the above website.
  • 3) Patent and Trademark Resource Center (PTRC) (for all users) — PTRCs are libraries located throughout the U.S. that provide specialized resources regarding patents and trademarks to the public. Information about PTRCs may be found at www.uspto.gov/PTRC;
  • 4) Patent Full-Text Databases (for all users) — Patent Full Text Databases are available on the USPTO website at www.uspto.gov/SearchPatentFullText;
  • 5) E-Patent Reference (for registered users associated with this application) — E-Patent Reference is provided through the USPTO Private Patent Application Information Retrieval system (Private PAIR) which is available at https://ppair-my.uspto.gov/pair/PrivatePair. Information on becoming a registered user can be found at www.uspto.gov/patents/apply/applying-online/getting-started-new-users. For additional information regarding E-Patent Reference or becoming a registered user, contact the Electronic Business Center at 1-866-217-9197 (toll-free), 571-272-4100 (local), or by email at ebc@uspto.gov; or
  • 6) commercial sources.

Copies of the U.S patent(s) and/or U.S. patent application publication(s) cited below may also be purchased for a fee preferably from the Patent and Trademark Copy Fulfillment Branch’s Certified Copy Center storefront at https://certifiedcopycenter.uspto.gov or by written request to Mail Stop Patent and Trademark Copy Fulfillment Branch, Director of the U.S. Patent & Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. For information regarding purchasing copies of U.S. patents and U.S. patent application publications, contact the Patent and Trademark Copy Fulfillment Branch at 1-800-972-6382 (toll free), 571-272-3150 (local), or by email at dsd@uspto.gov.

Some of the above options will cause U.S. patent(s) and/or U.S. patent application publication(s) to be downloaded in Portable Document Format (PDF). The downloaded documents can be viewed and printed using most commercially available web browsers. Free PDF viewers are additionally available through online sources, such as Adobe Systems Incorporated at www.adobe.com/acrobat/pdf-reader.html.

For additional information or questions, contact the Pro Se Assistance Program at 1-866-767-3848 or by email at innovationdevelopment@uspto.gov or the Inventors Assistance Center at 1-800-786-9199 (toll free), 571-272-1000 (local), or 1-800-877-8339 (TDD/TTY).

Examiner Note:

  • 1. This form paragraph is recommended for use in Office actions citing U.S. patent(s) or U.S. patent application publication(s) when the applicant is not represented by a registered patent attorney or a registered patent agent.
  • 2. This form paragraph should be followed by a citation to a U.S. patent(s) and/or a U.S. patent application publication(s).
Form PTO-892. Notice of References Cited