By Donald Zuhn --
The U.S. Patent and Trademark Office has added four new forms to its Claims and Continuations Practice webpage. The new form likely to get the most use is PTO/SB/206, which can be used to identify commonly owned applications and patents pursuant to Rule 78(f)(1) and provide a rebuttal or terminal disclaimer/ explanation pursuant to Rule 78(f)(2) (see "An Aanlysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents"). Also provided is PTO/SB/201, which can be used to request streamlined docketing (see "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1) and 1.114: Streamlined Examination"). Two new forms which practitioners may find to be less useful are PTO/SB/211, for submitting a list of references in an Examination Support Document (ESD), and PTO/SB/216, which is a transmittal for submitting an ESD (see "An Analysis of the New Rules: 37 C.F.R. § 1.265: Examination Support Document" and "USPTO Releases ESD Guidelines").
On Monday, the Patent Office announced that the latest version of the Manual of Patent Examining Procedure (M.P.E.P.) -- 8th Edition, Revision 6 -- is now available. The parts of the latest version of the M.P.E.P. that have been updated are the Blue Pages (a complete list of changes to the latest version of the M.P.E.P.); the Title Page; Chapter 700 (Examination of Applications), Chapter 1800 (Patent Cooperation Treaty), and Chapter 2100 (Patentability); Appendix II (List of Decisions Cited), Appendix L (Patent Laws; Title 35), Appendix R (Patent Rules; 37 C.F.R.), Appendix T (Patent Cooperation Treaty), and Appendix AI (Administrative Instructions Under the PCT); and the Index. None of the changes to the latest version of the M.P.E.P. concern the new continuation and claims rules. Of particular interest to Patent Docs readers is the fact that, according to the Blue Pages, M.P.E.P. § 710.06 has only been changed to delete reference to a 1924 Commissioner's Decision. Thus, it appears that this section can still be used by applicants, as reported here previously (see "Procuring Patent Protection from the Present PTO" and "More on M.P.E.P. § 710.06"), to seek correction of errors in an Office action.
Finally, last Thursday, the Patent Office published corrections to its April 2007 Revision of Patent Cooperation Treaty Procedures notice, as previously reported here.
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