Patent Bar MPEP Q & A Podcast

Question: What are the major differences between AIA 35 U.S.C. 102(c) and the CREATE Act? Answer: The major differences between AIA 35 U.S.C. 102(c) and the CREATE Act are that: (1) the AIA provision is keyed to the effective filing date of the claimed invention, while the CREATE Act focuses on the date that the […] The post MPEP Q & A 357: What are the major differences between AIA 35...

Question: If a maintenance fee is filed after the 6-month grace period, then what must a petition filed under the unintentional standard of 37 C.F.R. 1.378(b) include? Answer: If a maintenance fee is filed after the 6-month grace period, then a petition filed under the unintentional standard of 37 C.F.R. 1.378(b) must include … (A) […] The post MPEP Q & A 356: What must a petition filed...

Question: List a situation that does not constitute a license so as to prohibit claiming small entity status. Answer: The following situations do not constitute a license so as to prohibit claiming small entity status: a use license to the Government resulting from a rights determination; a use license to the Government resulting from Federal […] The post MPEP Q & A 355: List a situatio...

Question: Copendency is defined in the clause which requires that the later-filed application must be filed before the occurrence of what? Answer: Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the […] The post MPEP Q & A 354: When m...

Question: When can claims be finally rejected in a first Office action for a new application? Answer: For a new application, claims may be finally rejected in the first Office action when: (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new […] The post MPEP Q & A 353: When can claims be finally rejected in a...

Question: List 3 fees that are reduced by 80 percent for micro entities. Answer: The fees which are reduced by 80 percent for micro entities include: filing fees (nonprovisional and provisional) search fees examination fees issue fees appeal fees for utility design, plant, and reissue patent applications patent maintenance fees including the maintenance fee grace […] The post MPEP Q & A...

Question: List 2 situations where RCE provisions do not apply. Answer: The RCE provisions do not apply to: (A) a provisional application; (B) an application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995; (C) an international application filed under 35 U.S.C. 363 before June 8, 1995, or an […] The post MPEP Q & A 351: List 2 situations where RCE provision...

Question: What does application information include? Answer: Application information includes the title of the invention, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the type of application (e.g., utility, plant, design, reissue, provisional). Chapter Details: The answer to this...

Question: As of December 29. 2022, list 3 fees that are reduced by 60 percent for small entities? Answer: As of December 29. 2022, the following fees are reduced by 60 percent for small entities: patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees; […] The post MPEP Q & A 349: List 3 fees that are reduc...

Question: Give 3 examples of asexually propagated plants. Answer: Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, apomictic seeds, bulbs, division, slips, rhizomes, runners, corms, tissue culture, nucellar embryos, etc. Chapter Details: The answer to this question […] The...

Question: What rule are design practitioners registered under and what can they practice in? Answer: Design patent practitioners are registered under 37 C.F.R. 11.6(d) and can only practice in design patent matters. In contrast, patent practitioners registered under 37 C.F.R. 11.6(a)-(c) can practice in all patent matters, which includes design patent matters. Chapter Details: The […] The po...

Question: When is a Sequence Listing XML required? Answer: When an application filed under 35 U.S.C. 111(a) having a filing date on or after July 1, 2022, or an application which entered the national stage, having an international filing date on or after July 1, 2022, contains disclosure of nucleotide and/or amino acid sequences, a […] The post MPEP Q & A 346: When is a Sequence Listing...

Question: List two types of individuals that affidavits or declarations filed under 37 C.F.R. 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103 can be made by. Answer: Affidavits or declarations filed under 37 C.F.R. 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103 must be made by either: […] The post MPEP Q & A 345: List two types of individuals that affi...

Question: How can an applicant overcome a statutory double patenting rejection? Answer: A terminal disclaimer cannot be filed to obviate a statutory double patenting rejection. A statutory double patenting rejection can be overcome by canceling or amending the conflicting claims so they are no longer coextensive in scope. A complete response to a statutory double […] The post MPEP Q & A...

Question: Can any further submission of prior art by the same real party in interest be considered after the filing of the protest? Answer: After the filing of the protest, no further submission of prior art by the same real party in interest will be considered, except for new, non-cumulative prior art submitted requires that a […] The post MPEP Q & A 343: Can prior art submissions occu...

Question: When has a 35 U.S.C. 102 rejection over multiple references been held to be proper when the extra references are cited? Answer: Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the […] The post MPEP Q & A 342: When is a 35 U.S.C. 102 rejection over...

Question: What happens when the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent? Answer: When the claim for foreign priority or the certified copy of the foreign application is filed […] The post MPEP Q & A 341: Circumstances surrounding claim for foreign priority...

Question: What are some non-limiting examples of claims that are not directed to any of the statutory categories? Answer: Non-limiting examples of claims that are not directed to any of the statutory categories include: Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or […] The post MPEP Q & A 340: What are non-limiting exa...

Question: When is information material to patentability according to the duty to disclose? Answer: Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of […] The post MPEP Q & A 339:...

Question: What are two of the requirements for an English language translation of a non-English language foreign application? Answer: If an English language translation of a non-English language foreign application is required: 1) the translation must be that of the certified copy (of the foreign application as filed) and 2) it must be filed together […] The post MPEP Q & A 338: Require...

Question: List three examples of the kinds of information, in addition to prior art documents, that can be relied on in a protest. Answer: The following are examples of the kinds of information, in addition to prior art documents, which can be relied on in a protest: (A) Information demonstrating that the invention was publicly known […] The post MPEP Q & A 337: Kinds of information tha...

Question: When should relevant documentation submitted to a regulatory review body be submitted for the Office for review? Answer: Where relevant documentation is submitted to a regulatory review body, such as the U.S. Food & Drug Administration (FDA), and is material to any pending patent application or reexamination proceeding, such documentation should be submitted for […] The post MP...

Question: Under what circumstances will the international and search fees be refunded? Answer: The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau. The search fee will be refunded if the application is withdrawn […] The post MPEP Q & A 335: Unde...

Question: Which two types of assignee(s) may conduct either the prosecution of a national application for patent or a reexamination proceeding? Answer: The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are: (1) A single assignee. An assignee of the entire right, title and interest in the […] The post MPEP Q & A 334:...

Question: If additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, is a supplemental reissue oath or declaration required? Answer: For applications filed on or after September 16, 2012, if additional defects or errors are corrected in the reissue after the filing of the reissue oath […] The post MPEP Q & A 333: When a supplemental...