37 CFR Rules - Patent Bar Prep

Fractured Crown: The Procedural Rules

While 35 USC provides the foundational law, 37 CFR provides the detailed procedures governing how Athelia conducts examinations. These are the rules of practice—the step-by-step instructions that transform abstract statutory authority into concrete examination process.

Part 1 (General): Filing requirements, fees, signatures, extensions of time. The mundane but essential procedures that keep applications moving through the system.

Part 11 (Attorney Conduct): Professional responsibility for patent practitioners. Ethical requirements, disciplinary procedures, unauthorized practice. Athelia expects patent agents and attorneys to follow these rules—violations lead to suspension or disbarment.

Part 41 (Appeals): PTAB procedures for ex parte appeals. Notice, brief, answer, oral hearing. The formal process for challenging Athelia's rejections.

Part 42 (AIA Trials): IPR, PGR, CBM procedures. The post-grant challenge mechanisms where third parties can attack already-granted patents before PTAB.

These rules are binding. When the exam asks about procedural requirements, it's testing whether you know 37 CFR. Statutes tell WHAT to do; CFR tells HOW to do it.

📝 37 CFR Part 1 - Rules of Practice

37 CFR 1.4 - Nature of Correspondence and Signature Requirements

Signature requirements: All documents must be signed. Electronic signatures permitted via EFS-Web or Patent Center.

Who can sign:

Patent practitioner of record
Patent owner (or applicant if not assigned)
Inventor (if no practitioner appointed)
Person with written authority

Exam Trap: Unsigned papers can be held non-responsive. USPTO will give notice and time to correct, but may result in abandonment if not corrected.

37 CFR 1.8 - Certificate of Mailing/Transmission

Filing date = date of deposit: Certificate of mailing creates filing date as of date paper deposited with USPS (not received by USPTO).

Certificate must state:
"I hereby certify that this correspondence is being deposited with the United States Postal Service as First Class Mail in an envelope addressed to [address] on [date]."

Pro Tip: Use Express Mail (EFS) for absolute proof of filing date. Certificate of mailing only works for deadlines, NOT for filing applications.

37 CFR 1.14 - Patent Application Files Available

File access rules: Application files open to public upon publication (18 months) or patent grant. Before publication, access limited to applicant and authorized persons.

Who can access unpublished applications:

Applicant/patent owner
Attorney/agent of record
Assignee with written authorization
Government agencies (under certain circumstances)

37 CFR 1.48 - Correction of Inventorship

Adding/removing inventors: Can correct inventorship with statement explaining error and petition fee.

Requirements:

Statement of facts explaining error
Oath/declaration by actual inventor(s)
Petition fee
Must not have been done to deceive (no deceptive intent)

Important: Inventorship correction allowed anytime during prosecution. After patent issues, requires certificate of correction or reissue.

37 CFR 1.53 - Application Types and Filing Requirements

(b) Non-provisional applications: Must include specification, at least one claim, drawings (if necessary), oath/declaration (can be submitted later).

(c) Provisional applications: Must include specification, drawings (if necessary). NO CLAIMS required. NO oath required.

Provisional vs. Non-Provisional:
• Provisional: cheaper, no claims, 12-month pendency, never examined
• Non-provisional: examined, must have claims, can mature to patent

37 CFR 1.56 - Duty to Disclose Information Material to Patentability

Duty of disclosure: Each individual associated with filing/prosecution has duty to disclose material information to USPTO.

Who has duty:

Each inventor
Each attorney/agent who prepares or prosecutes
Every other person substantively involved

What is material:

Information establishing prima facie case of unpatentability, OR
Information refuting or inconsistent with position taken by applicant

Violation consequences: Inequitable conduct → entire patent unenforceable (not just claims at issue). Post-Therasense requires but-for materiality + specific intent to deceive.

37 CFR 1.97-1.98 - Information Disclosure Statements (IDS)

Timing for IDS submission (no fee required):

Within 3 months of filing date, OR
Before mailing of first Office Action, OR
With first response to Office Action (if within 3 months of OA)

Late IDS (fee required): After above periods but before NOA or FINAL

Form: Use PTO/SB/08. Must list each reference, explain relevance or submit with English translation/copy if foreign.

37 CFR 1.111 - Reply by Applicant

Response to non-final Office Action: 3-month statutory period (extendable to 6 months with fees).

Complete reply must:

Fully respond to every ground of rejection
Reply to every requirement
Include amendments (if any) and arguments

37 CFR 1.116 - Amendments After Final Rejection

After-final amendments: Examiner has discretion whether to enter. Will enter only if amendment:

Places application in condition for allowance, OR
Does not require further search or consideration of different issues

Safer option: File RCE (Request for Continued Examination) under § 132(b) to guarantee amendments will be entered.

37 CFR 1.136 - Extensions of Time

(a) Extensions for most responses: Can extend up to 3 additional months beyond 3-month statutory period (6 months total).

Fee schedule (small entity):

1st month: $200
2nd month: $600
3rd month: $1,400

(b) Non-extendable periods: Certain periods CANNOT be extended (restriction requirements, missing parts, reissue oath).

37 CFR 1.181 - Petitions to Commissioner

Petition for supervisory review: Can petition Commissioner for relief from examiner action (non-appealable procedural matters).

Key distinction: Petitions = procedural issues (file with Office of Petitions). Appeals = substantive rejections (file with PTAB).

⚖️ 37 CFR Part 11 - Representation of Others Before USPTO

37 CFR 11.5 - Requirements for Registration

Who can practice before USPTO:

Patent attorney: Licensed attorney + passed Patent Bar
Patent agent: Technical degree + passed Patent Bar
Pro se: Inventor can represent themselves

Requirements to sit for Patent Bar: Scientific/technical bachelor's degree OR equivalent technical course hours (Category A, B, or C).

37 CFR 11.18 - Confidentiality of Information

Attorney-client privilege: Practitioner must maintain confidentiality of client information.

Exceptions (may disclose):

Client gives informed consent
Necessary to prevent death/substantial bodily harm
To prevent/mitigate fraud on tribunal
To establish claim/defense in dispute with client

37 CFR 11.106 - Conflict of Interest

Cannot represent client if: Representation directly adverse to another client OR materially limited by practitioner's own interests.

Can represent despite conflict IF:

Reasonably believes can provide competent representation
Not prohibited by law
Does not involve asserting claim against client in same proceeding
Client gives informed consent in writing

37 CFR 11.10 - Sanctions and Disciplinary Actions

Grounds for discipline: Violation of Rules of Professional Conduct, fraud, misrepresentation, or unethical behavior.

Possible sanctions:

Reprimand (public or private)
Suspension (temporary)
Exclusion (permanent disbarment)

📋 37 CFR Part 41 - Practice Before PTAB

37 CFR 41.31 - Appeal to Board - Notice of Appeal

Notice of Appeal filing: Within 6 months of Final Rejection (or examiner's answer maintaining rejection).

Must identify:
• Application number
• Rejected claims being appealed
• Fee payment

37 CFR 41.37 - Appeal Brief

Filing deadline: 2 months from Notice of Appeal.

Brief must contain:

Real party in interest
Related appeals/interferences
Status of claims
Status of amendments
Summary of claimed subject matter
Argument: why examiner erred
Claims appendix

37 CFR 41.41 - Reply Brief

Optional reply brief: Within 2 months of Examiner's Answer. Can respond to new arguments in Answer.

New ground of rejection in Answer: Applicant can either (1) reopen prosecution and respond, or (2) maintain appeal and file reply brief.

⚔️ 37 CFR Part 42 - AIA Trial Proceedings

37 CFR 42.100-42.123 - Inter Partes Review (IPR)

Who can file: Any third party (not patent owner). Cannot file if served with infringement complaint >1 year ago.

When: After 9 months from patent grant (or after PGR terminates).

Grounds: §§ 102, 103 only, based on patents and printed publications.

Institution standard: Reasonable likelihood petitioner will prevail on at least one challenged claim.

37 CFR 42.200-42.223 - Post-Grant Review (PGR)

Who can file: Any third party.

When: Within 9 months of patent grant.

Grounds: ANY invalidity ground (§§ 101, 102, 103, 112).

Institution standard: More likely than not that at least one claim is unpatentable.