Patent Bar MPEP Q & A Podcast

Question: When may the claims of a new application be finally rejected in the first Office action? Answer: The claims of a new application may be finally rejected in the first Office action in those situations where: (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) […] The post MPEP Q & A 229: When are the claims of a new appli...

Question: Who will be listed in the assignee section of a patent? Answer: The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or for any patent that is granted. Any desired change to the designated applicant must be made […] The post MPEP Q & A 228: Who is listed on the assignee section of a pa...

Question: If the Office made a material mistake in a patent application publication that is apparent from the Office records and applicant wishes to correct the material mistake, applicant may file a request for corrected publication. What are the requirements for request for a corrected publication? Answer: If the Office made a material mistake in […] The post MPEP Q & A 227: What are...

Question: When is a rejection on the ground of lack of utility appropriate? Answer: A rejection on the ground of lack of utility is appropriate when: it is not apparent why the invention is “useful” because applicant has failed to identify any specific and substantial utility and there is no well-established utility, or an assertion […] The post MPEP Q & A 226: When is a rejection on th...

Question: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification? Answer: Reasons, why the prior art element should not be considered an equivalent to the invention disclosed in the specification, may include: teachings in the specification that the particular prior art is […] The post MPEP Q & A 225: What ar...

Question: What are the “Appropriate circumstances” to vacate the order granting reexamination? Answer: “Appropriate circumstances” exist to vacate the order granting reexamination where, for example: (A) the reexamination order is facially not based on prior art patents or printed publications; (B) reexamination is prohibited under 37 CFR 1.907; (C) all claims of the patent...

Question: Document size fees are only applicable to non-patent documents having greater than what number of pages? Answer: The document size fees are only applicable to non-patent documents having greater than 20 pages. Non-patent documents having 20 pages or less are not subject to the document size fees. Chapter Details: The answer to this question […] The post MPEP Q & A 223: What Si...

Question: AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or subject to an obligation of assignment to the same person in applying common ownership […] The post MPEP Q & A 222: What are the Three Conditions...

Question: AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor. What are they? Answer: AIA 35 U.S.C. 102(a)(2) sets forth three types of […] The post MPEP Q & A 221: What are the Three Types of Patent Docume...

Question: What was Section 42.208 paragraph (c) amended to in the supplement entitled: Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board? Answer: Section 42.208 is amended by revising paragraph (c) to read as follows: * * * * * (c) Sufficient grounds. Post-grant review shall not be instituted […] The post MPEP Q & A 220: What are the Section 42.208...

Question: When may the OPAP object to and require corrected drawings within a set time period? Answer: The OPAP may object to and require corrected drawings within a set time period, if the drawings: have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough […] The post MPEP Q & A 219: When may the OPAP object to and require corrected d...

Question: What is the issue of correlation as related to matters of invitro/in vivo? Answer: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or […] The post MPEP Q & A 218: What is the issue of correlation abo...

Question: What was Section 42.23 paragraph (b) amended to in the supplement entitled: Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board? Answer: Section 42.23 is amended by revising paragraph (b) to read as follows: 42.23 Oppositions and replies. * * * * * (b) All arguments for the […] The post MPEP Q & A 217: What are the Section 42.23 paragraph (b...

Question: What is the time limit for establishing the International Search Report and the Written Opinion of the International Searching Authority? Answer: Publication of the international application occurs at 18 months from the earliest priority date or, where there is no priority date, 18 months from the international filing date. The international search report is […] The post MPEP Q &#0...

Question: When did the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’ take effect? Answer: This rule is effective May 2, 2016, and applies to all AIA petitions filed on or after the effective date and to any ongoing AIA preliminary proceeding or trial before the […] The post MPEP Q & A 215: When Did Amendments to the Rules of Practic...

Question: According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’, what are sufficient grounds for a post-grant review? Answer: 37 CFR 42.208 (C) states that Post-grant review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting […] The post MPEP Q & A 214: What are Suf...

Question: Can attorney arguments take the place of evidence? Answer: No, the arguments of counsel cannot take the place of evidence in the record. Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, […] The post MPEP Q &#...

Question: According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’, what is the number of days before an oral argument for the exchange of exhibits? Answer: The number of days before an oral argument for the exchange of exhibits is at least 7 days. […] The post MPEP Q & A 212: What is the Number of Days Before an Oral Argument...

Question: When may an abandoned application be used as prior art? Answer: An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent [application] is reference[d] in the disclosure of another patent, in a publication, or by voluntary disclosure under former Defensive […] The post MPEP Q & A 2...

Question: What is the executive summary of the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’? Answer: This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for IPR, PGR, CBM, and […] The post MPEP Q & A 210: What is the Executive Summa...

Question: Does a copy of an oath or declaration from a prior application need to be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012 even if the oath or declaration identifies the application number of the prior application? Answer: Yes, a copy of an […] The post MPEP Q & A 209: Submission of an Oath...

Question: Is it possible to file a petition to make an application special without a fee? Answer: A petition to make an application special may be filed without a fee if the basis for the petition is: (1) The applicant’s age or health; or (2) That the invention will materially: (i) Enhance the quality of […] The post MPEP Q & A 208: Filing a Petition to Make an Application Special Witho...

Question: When can a practitioner enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client? Answer: A practitioner shall not enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a […] The post MPEP Q & A...

Question: What are the requirements for an applicant to rescind a nonpublication request? Answer: The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublication request must: Identify the application to which it is directed; State in a conspicuous manner that the request that the application is not to be […] The post MPEP Q & A 206: Requirements fo...

Question: What is the meaning of claims limited to species? Answer: Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a claim may encompass two or more of […] The post MPEP Q & A 205: Meani...