Office Personnel Not To Express Opinion on Validity, Patentability, Expiration Date, or Enforceability of Patent

Every patent is presumed to be valid. See

35 U.S.C. 282

, first

sentence. Public policy demands that every employee of the United States Patent and

Trademark Office (USPTO) refuse to express to any person any opinion as to the validity or

invalidity of, or the patentability or unpatentability of any claim in any U.S. patent or

the expiration date of any patent, except to the extent necessary to carry out:

(A) an examination of a non-reissue patent application

where determination of the expiration date of a patent is necessary to conduct

examination of the non-reissue patent application,

(B) an examination of a reissue application of the patent,

(C) a supplemental examination proceeding or reexamination proceeding to

reexamine the patent,

(D) an interference or derivation proceeding involving the patent,

(E) a patent term adjustment or extension under

35 U.S.C.

154

and/or

35 U.S.C. 156

where determination

of the expiration date of a patent is necessary to determine the adjustment or

extension,

(F) a notification that a patent has expired for failure

to pay maintenance fee,

(G) a consideration of a request under the regulations

(e.g., a petition) wherein determination of patent term is necessary or arises as an

ancillary matter, or

(H) an

inter partes

or post-grant

review of the patent.

The question of validity or invalidity is otherwise exclusively a matter

to be determined by a court. Likewise, the question of enforceability or unenforceability

is exclusively a matter to be determined by a court. Members of the patent examining corps

are cautioned to be especially wary of any inquiry from any person outside the USPTO,

including an employee of another U.S. government agency, the answer to which might indicate

that a particular patent should not have issued. No USPTO employee may pursue a bounty

offered by a private sector source for identifying prior art. The acceptance of payments

from outside sources for prior art search activities may subject the employee to

administrative disciplinary action

tside the USPTO,

including an employee of another U.S. government agency, the answer to which might indicate

that a particular patent should not have issued. No USPTO employee may pursue a bounty

offered by a private sector source for identifying prior art. The acceptance of payments

from outside sources for prior art search activities may subject the employee to

administrative disciplinary action.

Office employees may provide factual information regarding

the calculation of patent term in

general

(i.e., a

design patent term is 15 years-from-grant if the underlying design patent application was

filed on or after May 13, 2015, and 14 years-from-grant if the design application was filed

earlier). However, office employees should refuse to provide a determination or express an

opinion addressing any patent owner or public inquiries as to a

specific

patent's expiration date, except as

provided above in items A-H. A number of factors may affect calculation of a patent term

expiration date, both pre- and post-issuance, that may create difficulty in accurately

calculating the term of a patent. In the event of any inquiries, the USPTO has provided a

downloadable patent term calculator as a resource to help the public estimate the

expiration date of a patent at

www.uspto.gov/patent /laws-and-regulations/ patent-term-calculator

. See

also

MPEP §

2701

.

When a field of search for an invention is requested, examiners should

routinely inquire whether the invention has been patented in the United States. If the

invention has been patented, no field of search should be suggested

lator as a resource to help the public estimate the

expiration date of a patent at

www.uspto.gov/patent /laws-and-regulations/ patent-term-calculator

. See

also

MPEP §

2701

.

When a field of search for an invention is requested, examiners should

routinely inquire whether the invention has been patented in the United States. If the

invention has been patented, no field of search should be suggested.

Employees of the USPTO, particularly patent examiners who examined an

application which matured into a patent or a reissued patent or who conducted a

reexamination proceeding, should not discuss or answer inquiries from any person outside

the USPTO as to whether or not a certain reference or other particular evidence was

considered during the examination or proceeding and whether a claim would have been allowed

over that reference or other evidence had it been considered during the examination or

proceeding. Likewise,

employees

are cautioned against answering any

inquiry concerning any entry in the patent or reexamination file, including the extent of

the field of search and any entry relating thereto. The record of the file of a patent or

reexamination proceeding must speak for itself.

Practitioners shall not make improper inquiries of members of the patent

examining corps. Inquiries from members of the public relating to the matters discussed

above must out of necessity be refused and such refusal should not be considered

discourteous or an expression of opinion as to validity, patentability or enforceability.

The definitions set forth in

37 CFR 104.1

and the exceptions in

37 CFR

104.21

are applicable to this section.