Patent Bar MPEP Q & A Podcast

Question: List two factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is ‘undue’. Answer: The factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does [&#823...

Question: Do the changes to 35 U.S.C. 102 and 103 in the AIA apply to applications filed before March 16, 2013? Answer: No, the changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013. Chapter Details: The answer to this question can be found […] The post MPEP Q & A 78: AIA and Applications Filed Before March 16, 2013 appeared first on Pat...

Question: List one of the ways an inter partes reexamination proceeding may be concluded. Answer: Inter partes reexamination proceedings may be concluded in one of three ways: The prosecution of the reexamination proceeding may be brought to an end, and the proceeding itself concluded, by a denial of reexamination, or vacating the reexamination proceeding, or […] The post MPEP Q & A 77:...

Question: Who may file a petition for a covered business method patent review? Answer: A petitioner may not file a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has […] The post MPEP Q & A 76: Filing a Petition for a C...

Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual who is substantively involved on behalf of the patent owner. Chapter Details: The answer to […] The post MPEP Q & A 75: Duty of Di...

Question: Where may information material to patentability come from? Answer: Sources of information may include: co-workers trade shows communications from or with competitors potential infringers third parties Chapter Details: The answer to this question can be found in chapter 2000 of the MPEP. This chapter covers Duty of Disclosure. The answer is from the 9th […] The post MPEP Q & A...

Question: What must an international application contain? Answer: Any international application must contain the following elements: request, description, claim or claims, abstract and one or more drawings (where drawings are necessary for the understanding of the invention). Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter […] The post MPEP...

Question: When should a Certificate of Correction be filed instead of a reissue? Answer: While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be effected by filing a request for a Certificate of Correction if: (A) the only change being made in the patent is to correct the inventorship; […] The post MPEP Q & A 72: Filing of a Certificate o...

Question: What does bibliographic data include? Answer: Bibliographic data includes: inventor information; correspondence information; application information; representative information; domestic benefit information; foreign priority information; and applicant information. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form and Con...

Question: What are the three separate and distinct requirements required of the specification by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph? Answer: 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph require that the specification include the following three separate and distinct requirements: A written description of the invention; The manner […] The post MPEP Q &#...

Question: When may a protest be submitted? Answer: A protest must be submitted prior to the mailing of a Notice of Allowance and the application must be pending when the examiner receives the information. Chapter Details: The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protests. The […] The post MPEP Q & A 69: Submission of a Protest appeared fi...

Question: List one way possession may be shown. Answer: Possession may be shown in many ways. For example, possession may be shown by describing an actual reduction to practice of the claimed invention. Possession may also be shown by a clear depiction of the invention in detailed drawings or in structural chemical formulas which permit […] The post MPEP Q & A 68: Ways in Which Possessi...

Question: What is the first step of the three-step process for the recapture rule? Answer: The first step of the three-step process for the recapture rule is: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; Chapter Details: The answer to this question […] The post MPEP Q & A 67: First Step of the Recapture Ru...

Question: What three things does the relevance of long-felt need and the failure of others to the issue of obviousness depend on? Answer: The relevance of long-felt need and the failure of others to the issue of obviousness depends on several factors: First, the need must have been a persistent one that was recognized by those […] The post MPEP Q & A 66: Relevance of Long-Felt Need and...

Question: List one of the underlying factual inquiries of obviousness. Answer: The factual inquiries enunciated by the Court are as follows: Determining the scope and content of the prior art; and Ascertaining the differences between the claimed invention and the prior art; and Resolving the level of ordinary skill in the pertinent art. Chapter Details: […] The post MPEP Q & A 65: Under...

Question: What is the strongest rationale for combining references? Answer: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their […] The post MPEP Q...

Question: What may the grounds of refusal for a notification of refusal be based on? Answer: The grounds of refusal may be in the form of a rejection based on a condition for patentability under title 35, United States Code (which may include 35 U.S.C. 171, 102, 103, or 112), a requirement for restriction (where […] The post MPEP Q & A 63: Grounds of Refusal for a Notification of Refusa...

Question: Name one circumstance where an applicant may make amendments. Answer: The applicant may amend: before or after the first Office action and also after the second Office actions; after final rejection, if certain criteria are met; after the date of filing a notice of appeal, if the amendment meets certain criteria; and when and […] The post MPEP Q & A 62: Circumstances Where App...

Question: When does jurisdiction over the proceeding pass to the Board? Answer: Jurisdiction over the proceeding passes to the Board on filing of a reply brief or the expiration of time to file a reply brief. Chapter Details: The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers […] The post MPEP Q & A 61: Passing Jurisdiction onto the Board appeared...

Question: What must a request for republication include? Answer: A request for republication must include: a copy of the application in compliance with the Office Electronic Filing System (EFS) requirements, the publication fee; and the processing fee. Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter […] The post MPEP Q & A 60: Contents...

Question: What is one way an ex parte reexamination proceeding may be concluded? Answer: Ex parte reexamination proceedings may be concluded in one of four ways: The prosecution of the proceeding may be brought to an end, and the proceeding itself concluded, by a denial of reexamination, or vacating the reexamination proceeding, or terminating the […] The post MPEP Q & A 59: Concluding...

Question: Is an electronic publication considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates? Answer: Yes, an electronic publication is considered to be a printed publication within the […] The post MPEP Q &...

Question: List two types of government organizations that cannot qualify as a nonprofit organization. Answer: Government organizations, whether domestic or foreign, cannot qualify as nonprofit organizations. These include: A government research facility or other government-owned corporation could not qualify. Although the Federal government agencies do not qualify as nonprofit organizations for pa...

Question: Name the four conditions which, if all are present, establish a statutory bar under pre-AIA 35 U.S.C. 102(d). Answer: Pre-AIA 35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a statutory bar against the granting of a patent in this country: (A) The foreign application must be filed more than 12 […] The post MPEP Q & A 56: Four Conditions That E...

Question: What are the two ways in which permission to file a patent application abroad may be obtained? Answer: The two ways in which permission to file a patent application abroad may be obtained include: either a petition for a foreign filing license may be granted, or an applicant may wait 6 months after filing […] The post MPEP Q & A 55: Obtaining Permission to File a Patent Applic...