Patent Bar MPEP Q & A Podcast

Question: What is the 3-step test for recapture? Answer: The three-step test for recapture is: First, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; Next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; […] The post MPEP Q & A 179: What is...

Question: What is the difference between derivation and priority of invention? Answer: Derivation and priority of invention both focus on inventorship.  Derivation addresses originality, i.e., who invented the subject matter, whereas priority focuses on which party invented the subject matter first. Chapter Details: The answer to this question can be found in chapter 2100 of […] The post MPE...

Question: Can a patent practitioner ever reveal information relating to the representation of a client when the client has not given informed consent? Answer: Yes, a practitioner may reveal information relating to the representation of a client to the extent the practitioner reasonably believes necessary: (1) To prevent reasonably certain death or substantial bodily harm; […] The post MPEP Q...

Question: What does a petition under 37 C.F.R. 1.78 require? Answer: A petition under 37 CFR 1.78(b) requires: the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); the petition fee; and a […] The post MPEP Q & A 176: What Does a P...

Question: List a concept related to tracking or organizing information. Answer: Examples of concepts related to tracking or organizing information include; i. classifying and storing digital images in an organized manner ii. collecting information, analyzing it, and displaying certain results of the collection and analysis iii. encoding and decoding image data – RecogniCorp, LLC v. Nintendo [&#823...

Question: List 2 submission types that may not be filed via EFS Web. Answer: The following is a list of submission types that are not permitted to be filed using EFS-Web: Plant patent applications and follow-on documents associated with plant patent applications, other than third party preissuance submissions. Requests for Reexamination for plant patents and […] The post MPEP Q & A 174:...

Question: What is a complete nonprovisional application comprised of? Answer: A complete nonprovisional application comprises the following: a specification, including claims, drawings, an oath or declaration, the prescribed filing fee, search fee, examination fee and application size fee Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This […] The post...

Question: Name two fees that must be paid upon filing a request for prioritized examination. Answer: Upon filing the request for prioritized examination, the following fees must be paid for the application: (1) the prioritized examination fee set forth in 37 CFR 1.17(c), (2) the processing fee set forth in 37 CFR 1.17(i)(1), (3) the […] The post MPEP Q & A 172: Fees that Must be Paid Up...

Question: When the publication or issue date is later than the current date (i.e., the date of the request), who will that information be given to? Answer: When the publication or issue date is later than the current date (i.e., the date of the request), such information may be given only to the applicant, an […] The post MPEP Q & A 171: Instances Where Publication or Issue Date is Late...

Question: Must a claim be identified to a correct category of subject matter? Answer: It is not necessary to identify a single category into which a claim falls, so long as it is clear that the claim falls into at least one category. It is also not necessary to identify a “correct” category into which […] The post MPEP Q & A 170: Must a Claim be Identified to a Correct Category of Subje...

Question: Provide an example of a non-limiting claim that is not directed to any of the statutory categories. Answer: Examples of a non-limiting claim that is 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”) […] The post MPEP Q & A 169: Non-Limiting Claims Not Directed...

Question: A practitioner shall provide competent representation to a client. What does competent representation to a client entail? Answer: Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation. Chapter Details: The answer to this question can be found in the following supplement: Changes to...

Question: Name one circumstance where applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application. Answer: Applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application if: applicant filed a nonpublication request in the U.S. application filed under 35 U.S.C. 111(a); applicant subsequently […] The post MPEP Q & A...

Question: Name one item any further written opinion established by the International Preliminary Examining Authority should set forth. Answer: Any further written opinion established by the International Preliminary Examining Authority should set forth, as applicable: (A) Any defects in the international application concerning subject matter which is not required to be examined or which is [&#8230...

Question: List one consequence for when the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP). Answer: If the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP), it will result in the following consequences: […] The post MPEP Q & A 165: When Patent Owner Fails to File...

Question: Would a computer-implemented method that is deemed novel and non-obvious be effected by the tax strategy provision even if used for a tax purpose? Answer: A computer-implemented method that is deemed novel and non-obvious would not be affected by this provision even if used for a tax purpose. For example, a novel and non-obvious […] The post MPEP Q & A 164: Computer-Implemente...

Question: What are the most common basis for filing a reissue application? Answer: The most common bases for filing a reissue application are: the claims are too narrow or too broad; the disclosure contains inaccuracies; applicant failed to or incorrectly claimed foreign priority; and applicant failed to make reference to or incorrectly made reference to […] The post MPEP Q & A 163: Wha...

Question: When is a 35 U.S.C. 102 rejection with multiple references proper? Answer: A 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to: Prove the primary reference contains an “enabled disclosure;” Explain the meaning of a term used in the primary reference; or Show […] The post MPEP Q & A 162: When is a 35 U.S.C. 102 Re...

Question: Is it true that living subject matter with markedly different characteristics from any found in nature, such as the claimed bacterium produced by genetic engineering, are excluded from patent protection by 35 U.S.C. 101? Answer: No, it is not true. For example, the Federal Circuit has indicated that “discoveries that possess ‘markedly different characteristics from […] The post MPE...

Question: Can an Appellant request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection? Answer: No, an appellant cannot request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection. Chapter Details: […] The post MPEP Q & A 160: Rules for Appellant to R...

Question: What are the two criteria for subject matter eligibility? Answer: First, the claimed invention must be in one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. Second, the claimed invention also […] The post MPEP...

Question: Can maintenance fees be paid in cash? Answer: Maintenance fees may not be paid in cash. A maintenance fee may be paid: with Treasury notes with national bank notes with post office money orders with certified checks over the internet by electronic funds transfer (EFT), credit card, or deposit account payment methods Chapter Details: […] The post MPEP Q & A 158: Can Maintenance...

Question: Name two ways a patent may be corrected or amended. Answer: A patent may be corrected or amended in eight ways, namely by: reissue, the issuance of a certificate of correction which becomes a part of the patent, disclaimer, reexamination, supplemental examination, inter partes review, post grant review, and covered business method review Chapter Details: […] The post MPEP Q &...

Question: What is the definition of fundamental economic practices? Answer: The courts have used the phrases “fundamental economic practices” or “fundamental economic concepts” to describe concepts relating to the economy and commerce, such as agreements between people in the form of contracts, legal obligations, and business relations. Chapter Details: The answer to this question can […] Th...

Question: List two statutes that grounds for post-grant review may be raised for. Answer: Grounds for post-grant review include grounds that could be raised under 35 U.S.C. 102 or 103 including those based on prior art consisting of patents or printed publications. Other grounds available for post-grant review include 35 U.S.C. 101 and 112, with […] The post MPEP Q & A 155: Statutes Tha...