Patent Bar MPEP Q & A Podcast

Question: What does the broadest reasonable interpretation (BRI) do? Answer: The BRI sets the boundaries of the coverage sought by the claim and will influence whether the claim seeks to cover subject matter that is beyond the four statutory categories or encompasses subject matter that falls within the exceptions. Chapter Details: The answer to this […] The post MPEP Q & A 154: What Do...

Question: When will a practitioner be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct? Answer: A practitioner shall be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct if: The practitioner orders or, with knowledge of the specific conduct, ratifies the conduct involved; or The practitioner is a […] T...

Question: An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding. List 2 different types of information this may include. Answer: An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding; […] The post MPEP Q & A 152: Information...

Question: List two situations where a practitioner may withdraw from representing a client according to 37 C.F.R. 11.116. Answer: A practitioner may withdraw from representing a client if: Withdrawal can be accomplished without material adverse effect on the interests of the client; The client persists in a course of action involving the practitioner’s services that […] The post MPEP Q &#038...

Question: When is the on-sale bar of pre-AIA 35 U.S.C. 102(b) triggered? Answer: The on-sale bar of pre-AIA 35 U.S.C. 102(b) is triggered if the invention is both: The subject of a commercial offer for sale not primarily for experimental purposes and Ready for patenting. Chapter Details: The answer to this question can be found […] The post MPEP Q & A 150: Triggering of On-Sale Bar of P...

Question: What are the 4 categories of invention recited in 35 U.S.C. 101? Answer: The four categories of invention recited in 35 U.S.C. 101 are: process, machine, manufacture, or composition of matter. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of applications. The […] The post MPEP Q & A 149: Four Categories of...

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 148: The Duty...

Question: Can a post-grant review be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent? Answer: No, a post-grant review may not be instituted if, before the date on which the […] The post MPEP Q & A 147: Post-Grant Reviews and Civil Actions appea...

Question: When can a combination as claimed show that inventions are distinct? Answer: Inventions are distinct if it can be shown that a combination as claimed: (A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and (B) the subcombination can be shown to have utility either […] The post MPEP Q & A 146: When Can a...

Question: How can a maintenance fee be paid? Answer: A maintenance fee may be paid: with cash 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 answer to this question can […] The post MPEP Q & A 145: Methods For Paying...

Question: What should a subject matter eligibility rejection under Step 2 do? Answer: A subject matter eligibility rejection under Step 2 should: Identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception; Identify any additional elements (specifically point to […] The post MPEP Q & A 144: Wha...

Question: Who decides petitions for derivation and conducts any ensuing derivation proceeding? Answer: The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensuing derivation proceeding. Chapter Details: The answer to this question can be found in the following supplement: Derivation Proceeding Final Rules. This is a special supplement that at the […] The po...

Question: List 2 examples of evidence under 37 C.F.R. 1.131(a). Answer: The allegations of fact might be supported by submitting as evidence one or more of the following: (A) attached sketches; (B) attached blueprints; (C) attached photographs; (D) attached reproductions of notebook entries; (E) an accompanying model; (F) attached supporting statements by witnesses, where verbal […] The post...

Question: What are the three major issues that must be completed during the examination before an interference may be called? Answer: The three major issues that must be completed during the examination are: All pending claims must be allowed, finally rejected, or canceled All petitions must be decided All appeals from a final rejection must […] The post MPEP Q & A 141: Issues That Must...

Question: List two status identifiers that are expected to follow the claim number in an amendment to the claims. Answer: Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), or (not entered). The status identifier (withdrawn – currently [&#82...

Question: What fees might the Office refund? Answer: The Office may refund: A fee paid by mistake (e.g., fee paid when no fee is required); or Any fee paid in excess of the amount of fee that is required. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. […] The post MPEP Q & A 139: Fees the Office Might Refund appeared first on Patent Education Serie...

Question: When may a process and apparatus for its practice be shown to be distinct inventions? Answer: Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or […] The post MPEP Q & A 138: When May a Process and Apparatus f...

Question: Who may a party dissatisfied with a final decision in a derivation proceeding appeal to? Answer: A party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit. Chapter Details: The answer to this question can be found in the following supplement: Derivation Proceeding Final Rules. […] The post MPEP Q & A 137: Who May...

Question: The reasons document explains why each item of information does or does not raise a substantial new question of patentability (or SNQ) in a supplemental examination. What should a reasons document include? Answer: The reasons document explains why each item of information does or does not raise a SNQ. The reasons document should include: […] The post MPEP Q & A 136: What a Rea...

Question: When may the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) be the international filing date? Answer: The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated […] The post MPEP Q & A 135: When May the Prior Art...

Question: Who is barred from filing a request for ex parte reexamination of a patent? Answer: “Any person” may file a request for ex parte reexamination of a patent, unless prohibited by AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). Accordingly, there are no types of “persons” who are excluded from being able to seek reexamination. Corporations […] The post MPEP Q & A 134: Who is Barr...

Question: Name two types of correspondence that may be transmitted by facsimile. Answer: Types of correspondence which may be transmitted by facsimile include: CPAs (available for design applications only), amendments, declarations, petitions, information disclosure statements (IDS), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examination (RCEs), assignment do...

Question: What are the three separate and distinct requirements of the first paragraph of 35 U.S.C. 112? 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 and process of making and using the […] The post MPEP Q & A 132: What...

Question: What does an applicant who uses the Patent Cooperation Treaty gain the benefit of? Answer: An applicant who uses the Patent Cooperation Treaty gains the benefit of: (A) a delay in the time when papers must be submitted to the national offices; (B) an international search (to judge the level of the relevant prior […] The post MPEP Q & A 131: What Does an Applicant Who Uses the...

Question: What is a covered business method patent according to the AIA? Answer: The AIA specifies that a covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the […] The post MPEP Q & A 130: What is a...