Patent Bar MPEP Q & A Podcast

Question: Is a provisional application that is relied upon for priority in a U.S. patent and is abandoned available through the Patent Center? Answer: Yes, a provisional application that is relied upon for priority in a U.S. patent and is abandoned may be available through the Patent Center. Generally though, provisional applications are not published and […] The post MPEP Q & A 332: Av...

Question: Does the new ground of rejection raised by the Board in an appeal reopen prosecution? Answer: The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection was made includes an affirmance […] The post MPEP Q & A 331: Does new ground of rejection...

Question: Name two items the Technology Center will verify when a Request for Continuing Examination is initially processed. Answer: An RCE will be initially processed by the Technology Center (TC) assigned the application. Technical support personnel in the TC will verify that: (A) the application is a utility or plant application (i.e., not a design […] The post MPEP Q & A 330: Items...

Question: What non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period? Answer: The following non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period: (1) Petitioner engaged in significant, constructive efforts with the examiner to resolve the issue outside of the petitions […] The post MP...

Question: What are the reasons for insisting upon a restriction? Answer: Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each inventionas claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious search and/or examination burden on the […] The post MPEP Q & A 3...

Question: What information should also be submitted for each patent on which a maintenance fee or surcharge is paid? Answer: The following information should also be submitted for each patent on which a maintenance fee or surcharge is paid: (A) the fee year (i.e., 3 1/2, 7 1/2, or 11 1/2 year fee); (B) the […] The post MPEP Q & A 327: Information submitted for each patent on which a mai...

Question: What applications count for the filing limits for the purposes of establishing micro entity status under the “gross income” basis? Answer: For purposes of establishing micro entity status under the “gross income” basis, the application filing limit includes: (i) previously filed U.S. nonprovisional applications (e.g., utility, design, plant, continuation, and divisional applications), (i...

Question: List two pieces of information that should be placed on the first page of a protest. Answer: Each protest should be clearly identified as a “PROTEST UNDER 37 CFR 1.291.” It is also important that any protest against a pending application specifically identify the application to which the protest is directed with the identification being […] The post MPEP Q & A 325: List the pi...

Question: Name at least two items that must be submitted when adding a “Sequence Listing” after the application filing date. Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: (1) a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text […] The post MPEP Q & A 324: Name items that must be submi...

Question: Where a restriction (including an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, can the non-elected invention(s) and non-claimed, distinct subject matter be […]...

Question: What type of Demand will prevent an international application designating the U.S. to enter the national stage via the U.S. Designated Office? Answer: An international application designating the U.S. will enter the national stage via the U.S. Designated Office unless a Demand electing the U.S. is filed under PCT Article 31 whereupon entry will be via […] The post MPEP Q & A 3...

Question: What are the factual inquiries related to obviousness that the Court enunciates? Answer: Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows: (A) Determining the scope and content of the prior art; (B) Ascertaining the differences between the claimed invention and the […] The post MPEP Q & A 321:...

Question: What are the three types of designs the language “new, original and ornamental design for an article of manufacture” has been interpreted by the case law to include? Answer: The language “new, original and ornamental design for an article of manufacture” has been interpreted by the case law to include at least three kinds of designs: […] The post MPEP Q & A 320: What are the t...

Question: What three items must any assignment-related document for patent matters submitted by facsimile include? Answer: Any assignment-related document for patent matters submitted by facsimile must include: (A) an identified application or patent number; (B) one cover sheet to record a single transaction; and (C) payment of the recordation fee by a credit card, is […] The post MPEP Q &#0...

Question: Name two requirements of an oath or declaration under section 37 CFR 1.63? Answer: An oath or declaration under section 37 CFR 1.63 must: (1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name; (2) Identify the application to which it is directed; (3) Include a […] The post MPEP Q & A 318: Requirements of an oath or declaration u...

Question: How can you determine whether the original patent requirement is satisfied in a reissue application? Answer: Examiners should review the reissue application to determine whether the original patent requirement is satisfied, by considering if: (A) the claims presented in the reissue application are described in the original patent specification and enabled by the original […] The po...

Question: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, is it ever necessary to change the inventorship named in the application? Answer: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, it may become necessary to […] The post MPEP Q &#038...

Question: List two examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use and, therefore, do not define “substantial utilities.” Answer: The following are examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” […] The post MPEP Q &...

Question: When an examiner concludes that no substantial new question of patentability has been raised, they will prepare a decision denying the reexamination request. What will that request indicate for each patent and printed publication cited in the request? Answer: If the examiner concludes that no substantial new question of patentability has been raised, the […] The post MPEP Q &...

Question: Once the issue fee has been paid, list two reasons why the Office will withdraw the application from issue at its own initiative. Answer: Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except: (1) A mistake on the part […] The post MPEP Q & A 313: Reasons why the Office will withdraw the applicatio...

Question: List two General Plastic non-exclusive factors. Answer: The General Plastic non-exclusive factors include the following: Whether the same petitioner previously filed a petition directed to the same claims of the same patent; Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition […] The post MPEP Q & A 312: List...

Question: List two requirements for a petition for suspension of action under 37 CFR 1.103(a). Answer: A petition for suspension of action under 37 CFR 1.103(a) must: (A) be presented as a separate paper; (B) be accompanied by the petition fee set forth in 37 CFR 1.17(g); (C) request a specific and reasonable period of suspension not greater than […] The post MPEP Q & A 311: Two require...

Question: The three-month period in 37 CFR 1.704(b) applies to the Office notices and letters issued as part of the pre-examination processing of an application (except a Notice of Omitted Items in a Nonprovisional Application as discussed above). List two examples of these notices. Answer: These notices include: A Notice of Incomplete Nonprovisional Application (except as to […] The post MP...

Question: List two requirements for adding a “Sequence Listing” after the application filing date? Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text file submitted via the USPTO patent electronic […] The post MPEP Q & A 309: List two req...

Question: What type of arguments should a patent owner preliminary response include? Answer: A patent owner preliminary response may include one or more of the following arguments: The petitioner is statutorily barred from pursuing a review; The references asserted to establish that the claims are unpatentable are not in fact printed publications; The prior art […] The post MPEP Q & A 3...