Patent Bar MPEP Q & A Podcast: Recent Episodes
Lisa Parmley, USPTO Patent Practitioner #51006
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 & A 314: What will the request indicate for each patent and printed publication cited in the request? appeared first on Patent Education Series.
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 application from issue. appeared first on Patent Education Series.
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 two General Plastic non-exclusive factors. appeared first on Patent Education Series.
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 requirements for a petition for suspension of action under 37 CFR 1.103(a) appeared first on Patent Education Series.
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 MPEP Q & A 310: List two examples of notices issued as part of the pre-examination processing of an application appeared first on Patent Education Series.
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 requirements for adding a “Sequence Listing” after the application filing date? appeared first on Patent Education Series.
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 […]
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Question: When are electronic means or medium for filing IDSs permitted? Answer: As shown in chapter 600 … Electronic means or medium for filing IDSs are not permitted except for: IDSs electronically submitted using the USPTO patent electronic filing system; or copies of large tables, computer program listings, and sequence listings submitted as a PDF […]
The post MPEP Q & A 307: When are electronic means or medium for filing IDSs permitted? appeared first on Patent Education Series.
Question: Where a petitioner files a motion to seal with the petition that seeks entry of a protective order other than the default protective order, a patent owner may only access the sealed confidential information prior to the institution of the trial by which options? Answer: Where a petitioner files a motion to seal with […]
The post MPEP Q & A 306: Sealed confidential information prior to the institution of the trial by which options? appeared first on Patent Education Series.
Question: What must the supplemental search fee be accompanied by in addition to the payment? Answer: As shown in chapter 1800 … The supplemental search fee must be paid and be accompanied by: a protest and a request for refund of the supplemental search fee. Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers Patent Cooperation Treaty. The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or…
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Question: What does routine discovery include? Answer: Routine discovery includes: Production of any exhibit cited in a paper or testimony; The cross-examination of the other sides declarants; and Relevant information that is inconsistent with a position advanced during the proceeding. Routine discovery places the parties on a level playing field and streamlines the proceeding. Board authorization is not required to conduct routine discovery, although the Board will set the times for conducting this discovery in its Scheduling Order. Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is…
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Question: What should a request for a certificate of correction filed via the patent electronic filing system use as the document description? Answer: “A request for a certificate of correction filed via the patent electronic filing system should use the document description: Request for Certificate of Correction.” Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of Patents. The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later…
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Question: What are the major differences between 35 U.S.C. 102(c) and the CREATE Act? Answer: The major differences between 35 U.S.C. 102(c) and the CREATE Act are the following: 35 U.S.C. 102(c)is keyed to the effective filing date of the claimed invention, while the CREATE Act (pre-AIA 35 U.S.C. 103(c)) focuses on the date that the claimed invention was made; and The 2004 CREATE Act provisions (pre-AIA 35 U.S.C. 103(c)) only apply to obviousness rejections and not to anticipation and double patenting rejections. This follows from the fact that the CREATE Act merely provides that a reference may not be applied to support…
The post MPEP Q & A 302: Major differences between 35 U.S.C. 102(c) and the CREATE Act appeared first on Patent Education Series.
Question: All substantive communications with the Board regarding a proceeding must include all parties to the proceeding, except as otherwise authorized. What does the prohibition on ex parte communications not extend to? Answer: All substantive communications with the Board regarding a proceeding must include all parties to the proceeding, except as otherwise authorized. The prohibition on ex parte communications does not extend to: Ministerial communications with support staff (for instance, to arrange a conference call); Conference calls or hearings in which opposing counsel declines to participate; Informing the Board in one proceeding of the existence or status of a related…
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Question: What is the difference between sequence listing requirements filed before or after July 1, 2022? Answer: For applications filed before July 1, 2022, the sequence listing can be a “Sequence Listing” (as an ACSII plain text file in compliance with 37 CFR 1.821-1.824) submission must be submitted via the USPTO patent electronic filing system or on read-only optical disc. For applications filed on or after July 1, 2022, the sequence listing must be a “Sequence Listing XML” (as an XML file in compliance with 37 CFR 1.831-1.834) submission can be submitted via the USPTO patent electronic filing system or…
The post MPEP Q & A 300: Difference between sequence listing requirements filed before or after July 1, 2022 appeared first on Patent Education Series.
Question: What should a motion to exclude evidence include? Answer: A motion to exclude evidence should: (a) Identify where in the record the objection originally was made; (b) Identify where in the record the evidence sought to be excluded was relied upon by an opponent; (c) Address objections to exhibits in numerical order; and (d) Explain the basis and grounds for each objection. A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular fact. A motion to exclude…
The post MPEP Q & A 299: What should a motion to exclude evidence include? appeared first on Patent Education Series.
Question: A “Sequence Listing XML” may be submitted as a XML file with a “.xml” extension via the USPTO patent electronic filing system or as read-only optical discs. What does such a submission require? Answer: Such submission requires that applicant provide a statement in a separate paragraph that incorporates by reference the material in the XML file identifying the name of the XML file, the date of creation, and the size of the XML file in bytes (except that an incorporation by reference statement is not required for a sequence listing properly submitted as an XML file in an international…
The post MPEP Q & A 298: Submission requirements for “Sequence Listing XML” appeared first on Patent Education Series.
Question: List two exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate. Answer: Exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate: (A) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first inventor to file provisions of the AIA and where the 37 CFR 1.55/78statement is not present. (B) Correcting a claim to a prior application having…
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Question: List the criteria for “Large Tables” that may be submitted in electronic form in ASCII plain text. Answer: “Large Tables” that may be submitted in electronic form in ASCII plain text are: any individual table that is more than 50 pages in length, or multiple tables, if the total number of pages of all the tables in an application exceeds 100 pages in length. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application. The answer is from the 9th Edition, Revision 07.2022, Published…
The post MPEP Q & A 296: List the criteria for “Large Tables” appeared first on Patent Education Series.
Question: Which of the following new trial proceedings can the patent owner file a preliminary response for? Answer: The patent owner is afforded an opportunity to file a preliminary response for inter partes review (IPR), postgrant review (PGR), and covered business method patents (CBM). Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may…
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Question: What are the two aspects every requirement to restrict has? Answer: Every requirement to restrict has two aspects: the reasons (as distinguished from the mere statement of conclusion) why each invention as claimedis either independent or distinct from the other(s); and the reasons why there would be a serious search and/or examination burden on the examiner if restriction is not required, i.e., the reasons for insisting upon restriction therebetween as set forth in MPEP 800. Chapter Details: The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under…
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Question: Who conducts derivation proceedings, inter partes reviews, and post-grant reviews? Answer: The Board is to conduct derivation proceedings, inter partes reviews, and post-grant reviews. Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable. Section Summary: This question comes from the following supplement: “Patent Trial and Appeal Board Consolidated Trial…
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Question: List two changes the Hague Agreement Article 16(1) provides for in the International Register by the International Bureau. Answer: Hague Agreement Article 16(1) provides for the recording of certain changes in the International Register by the International Bureau, including: a change in ownership of the international registration; a change in the name or address of the holder; an appointment of a representative of the applicant or holder; a renunciation of the international registration with respect to any or all of the designated Contracting Parties; a limitation of the international registration with respect to any or all of the designated…
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Question: When did the derivation rules go into effect? Answer: The derivation rules went into effect 18 months after AIA enactment (March 16, 2013). Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable. Section Summary: This question comes from the following supplement: “Patent Trial and Appeal Board Consolidated Trial Practice…
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Question: How should measurements be given within a patent application? Answer: In order to minimize the necessity in the future for converting dimensions given in the English system of measurements to the metric system of measurements when using printed patents as research and prior art search documents, all patent applicants should use the metric (S.I.) units followed by the equivalent English units when describing their inventions in the specifications of patent applications. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application. The answer is…
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Question: List two situations that are not considered new grounds of rejection? Answer: Where the statutory basis for the rejection remains the same, and the evidence relied upon in support of the rejection remains the same, a change in the discussion of, or rationale in support of, the rejection does not necessarily constitute a new ground of rejection. In addition, if: (A) an amendment under 37 CFR 1.116 [or41.33] proposes to add or amend one or more claims; (B) appellant was advised (through an advisory action) that the amendment would be entered for purposes of appeal; and (C) the advisory…
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Question: How may an examiner treat an amendment not fully responsive to a non-final Office action? Answer: An examiner may treat an amendment not fully responsive to a non-final Office action by: (A) accepting the amendment as an adequate reply to the non-final Office action to avoid abandonment under 35 U.S.C. 133 and 37 CFR1.135; (B) notifying the applicant that the reply must be completed within the remaining period for reply to the non-final Office action (or within any extension pursuant to 37 CFR 1.136(a)) to avoid abandonment; or (C) setting a new time period for applicant to complete the…
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Question: When inconsistent information is given for an application data sheet, what submission will govern control according to 37 CFR 1.76(d)(1)? Answer: 37 CFR 1.76(d)(1) provides that the most recent submission will govern (control) with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or by the inventor’s oath or declaration, except that: (1) the most recent application data sheet will govern with respect to foreign priority or domestic benefit claims; and (2) the naming of the inventorship is governed by 37 CFR 1.41 and changes to inventorship or the…
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Question: What are the factual inquiries of obviousness enunciated by the Court? 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 prior art; and (C) Resolving the level of ordinary skill in the pertinent art. Chapter Details: 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 10.2019. Depending on future…
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Question: What do the provisions of 37 CFR 1.114, request for continued examination, not apply to? Answer: The provisions of 27 CFR 1.114, Request for continued examination, do not apply to: (1) A provisional application; (2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995; (3) An international application filed under 35 U.S.C.363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371; (4) An application for a design patent; (5) An international design application; or (6) A patent under reexamination. Chapter Details: The answer to…
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Question: When will a provisional application be given a filing date? Answer: A provisional application filed on or after December 18, 2013 will be given a filing date as of the date a specification, with or without claims, is received in the Office. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application. The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section…
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Question: List at least 3 special cases (those which are advanced out of turn for examination). Answer: The following is a list of special cases (those which are advanced out of turn for examination): (A) Applications on inventions that are deemed of peculiar importance to some branch of the public service and when for that reason the head of some department of the Government requests immediate action and the Director of the USPTO so orders. (B) Applications made special as a result of a petition to make special, a request for prioritized examination, or a request for participation in a…
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Question: Since CPA applications were eliminated for utility and plant applications, what should applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed consider filing? Answer: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. Henceforth, applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE). Chapter Details: The answer to this question can be found in chapter 200…
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Question: What is the time for reply to a final rejection? Answer: The time for reply to a final rejection is as follows: (A) All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain a form paragraph advising applicant that if the first reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. Thus, a variable reply period will be established. If the last…
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Question: When does the revocation of a filing receipt license become effective? Answer: The revocation becomes effective on the date on which the notice is mailed. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing. The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 140 of the MPEP. The following is a…
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Question: How can a maintenance fee and any necessary surcharge be made? Answer: The method of payment for the maintenance fee and any necessary surcharge shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order as provided in 37 CFR 1.23(a). If the maintenance fee and any necessary surcharge is sent in any other form, the Office may delay or cancel the credit until collection is made. For example, a personal or other uncertified check drawn on a U.S. bank that is…
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Question: What does a petition under 37 CFR 1.78(b) require? Answer: A petition under 37 CFR 1.78(b) requires: (A) 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); (B) the petition fee as set forth in 37 CFR1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR1.78(a)(1)(i) was unintentional. The Director may require additional information where there is a…
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Question: 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee up to 5 months after the end of the time period set to take action except during which circumstances? Answer: 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee asset forth in 37 CFR 1.17(a) up to 5 months after the end of the time period set to take action except: (A) where prohibited by statute, (B) where prohibited by one of the items listed in the rule, or (C) where applicant has been…
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Question: What are some examples of rationales that may support a conclusion of obviousness? Answer: Examples of rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) “Obvious to try” – choosing from a finite number of identified, predictable…
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Question: What actions should happen if an examiner discovers new matter in a substitute or additional drawing? Answer: If the examiner discovers new matter in a substitute or additional drawing, the drawing should not be entered and the examiner should describe the new matter that resulted in non-entry in the next Office action. A new drawing without such new matter maybe required if the examiner determines that a drawing is needed under 37 CFR 1.81 or 37 CFR 1.83. The examiner’s decision would be reviewable by filing a petition under 37 CFR 1.181.The Technology Center (TC) Director would decide such…
The post MPEP Q & A 275: Receipt of drawing after the filing date appeared first on Patent Education Series.
Question: During what conditions would the complete file wrapper and contents of a patent application published in redacted form not be available? Answer: If an application was published in redacted form, the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; and the application is still pending. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing. The answer is from the…
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Question: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee? Answer: Yes, requests for ex parte reexamination filed on or after January 16, 2018 may be filed with a reduced filing fee. This reexamination filing option was created to make it financially less burdensome for requesters with limited resources. Chapter Details: The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers Citation of Prior Art and Ex Parte Reexamination of Patents. The answer is from the 9th Edition, Revision 10.2019. Depending on future changes…
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Question: Name a limitation that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception. Answer: Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include: Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g.,a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer; Simply appending well-understood, routine, conventional activities…
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Question: What are three pieces of information each patent listed in the Official Gazette may give? Answer: As to each patent listed in the Official Gazette, the following information may be given: (A) Patent number; (B) Title of the invention; (C) Name of inventor(s), city, and state or country of residence; (D) Assignee’s name, city, and state or country of residence, if assigned; (E) Applicant’s name, city, and state or country of residence; (F) Filing date and application number; (G) For reissue patents, the original patent number and issue date, and the original application number and filing date; (H) U.S.…
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Question: Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for? Answer: Once appellant has filed a notice of appeal, appellant also may request that prosecution be reopened for the following situations: In response to a new ground of rejection made in an examiner’s answer, appellant may file a reply in compliance with 37 CFR 1.111 that addresses the new ground of rejection within two months from the mailing of the examiner’s answer In response to a substitute examiner’s answer that is written in response to a remand by the…
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Question: List two laboratory techniques the courts have recognized as well-understood, routine, conventional activities in the life science arts when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. Answer: The courts have recognized the following laboratory techniques as well-understood, routine, conventional activity in the life science arts when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: Determining the level of a biomarker in blood by any means; Using polymerase chain reaction to amplify and detect DNA; Detecting DNA…
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Question: If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, what should the examiner do? Answer: If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, the examiner should either: Convert dependent claim 2 into independent form by examiner’s amendment, cancel claim 1 in which the rejection was affirmed, and issue the application or ex parte reexamination certificate with claims 2…
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Question: What are the four purposes 35 U.S.C. 101 has been interpreted as imposing? Answer: 35 U.S.C. 101 has been interpreted as imposing four purposes. First, 35 U.S.C. 101 limits an inventor to ONE patent for a claimed invention. If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention. Second, the inventor(s) must be the applicant in an application filed before September 16, 2012, (except as otherwise provided in pre-AIA 37 CFR 1.41(b)) and the inventor or each…
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Question: Name one advantage a CPA has compared to a continuation or divisional application filed under 37 CFR 1.53(b). Answer: A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b). In addition, the Office will not normally issue a new filing receipt for a CPA. See 37 CFR 1.54(b). The time delay between the filing date and the…
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Question: What is the second part of the Alice/Mayo test often referred to as? Answer: The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. An inventive concept “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. v. Merial LLC. Instead, an “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp.…
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Question: How do examiners evaluate integration into a practical application? Answer: Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Many of these considerations overlap, and often more than one consideration is relevant to analysis of an additional element. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability. The answer is from the…
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Question: How is the markedly different characteristics analysis performed? Answer: The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties, and are evaluated based on what is recited in the claim on a case-by-case basis. If the analysis indicates that a nature-based product limitation does not exhibit markedly different characteristics, then that limitation is a product of nature exception. If the analysis indicates that a nature-based product limitation does have markedly different characteristics, then that limitation is…
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Question: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind. Answer: Examples of claims that do not recite mental processes because they cannot be practically performed in the human mind include: a claim to a method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals, where the claimed GPS receiver calculated pseudoranges that estimated the distance from the GPS receiver to a plurality of satellites, SiRF Tech; a claim to detecting suspicious activity by using network monitors and analyzing…
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Question: What is meant by a fundamental economic practice or principle? Answer: The courts have used the phrases “fundamental economic practices” or “fundamental economic principles” to describe concepts relating to the economy and commerce. Fundamental economic principles or practices include hedging, insurance, and mitigating risks. The term “fundamental” is not used in the sense of necessarily being “old” or “well-known.” However, being old or well-known may indicate that the practice is fundamental. Chapter Details: 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…
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Question: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time? Answer: The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. “Inventors may apply for a patent jointly even though: they did not physically work together or at the same time, each did not make the same type or amount of contribution, or each did not make a contribution to the subject matter of every claim of the patent.” Chapter Details: The…
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Question: What type of applications and proceedings may submit photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings via EFS-Web? Answer: Photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings may be submitted via EFS-Web in only the following types of applications and proceedings: (1) Nonprovisional design patent applications, including reissue design patent applications; (2) Provisional applications; (3) Nonprovisional utility patent applications, including reissue utility patent applications; (4) U.S. national stage applications; (5) International design applications; (6) Reexamination proceedings for utility or design patents; (7) Supplemental…
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Question: When do members of a Markush group share a ‘single structural similarity’? Answer: Members of a Markush group share a “single structural similarity” when they belong to the same recognized physical or chemical class or to the same art-recognized class (prong 1) and the members of a Markush group share a common function or use when they are disclosed in the specification or known in the art to be functionally equivalent (prong 2). Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability. The answer is from the 9th…
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Question: What must a statement under 37 CFR 1.97(e) state? Answer: A statement under 37 CFR 1.97(e) must state either; that each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement, or that no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry,…
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Question: What must a claim in dependent form contain? Answer: A claim in dependent form shall contain: (i) a reference to a claim previously set forth, and (ii) then specify a further limitation of the subject matter claimed. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application. The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer…
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Question: When the online fee payment in EFS-Web is unavailable, what types of submissions cannot be filed via EFS-Web, since online fee payment must accompany the submission? Answer: When the online fee payment in EFS-Web is unavailable, the following types of submissions cannot be filed via EFS-Web, since online fee payment must accompany the submission: (1) Petitions that require a fee for auto-processing by EFS-Web; (2) Pre-grant publication submissions that require a fee; (3) Third-party preissuance submissions that require a fee; and (4) Web-based Issue Fee Payment. Chapter Details: The answer to this question can be found in chapter 500 of the…
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Question: What are the benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) rather than requesting conversion? Answer: Claiming the benefit of the provisional application under 35 U.S.C. 119(e) is less expensive and will result in a longer patent term. The procedure requires the filing of a request in the provisional application for the conversion of the provisional application to a nonprovisional application and the required fee. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form,…
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Question: What are examples of situations where ownership must be established? Answer: Examples of situations where ownership must be established are when the assignee who is not the applicant: signs a request for status of an application or gives a power to inspect an application; appoints its own registered attorney or agent to prosecute an application; signs a disclaimer; consents to the filing of a reissue application; or signs a Fee Transmittal. Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner. Chapter Details: The answer to this question can be found in…
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Question: What happens if a claim for foreign priority is presented after the time period set in 37 CFR 1.55? Answer: If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority. In addition, a petition to accept an unintentionally delayed claim for foreign priority is necessary to correct any error in a foreign priority claim if the correction is sought after expiration of the time period set forth in 37 CFR 1.55. Chapter Details: The…
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Question: What are the enumerated groupings of abstract ideas defined as? Answer: The enumerated groupings of abstract ideas are defined as: 1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations; 2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and 3) Mental processes – concepts performed in the…
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Question: When is a protest considered timely? Answer: A protest is timely if (1) filed prior to the date the application was published under 37 CFR 1.211 or the date a notice of allowance was given or mailed, whichever occurs first, or (2) accompanied by written consent of the applicant and filed prior to the date a notice of allowance was given or mailed in the application. Publication under the Patent Cooperation Treaty (PCT) by the World Intellectual Property Organization (WIPO) of an international application would not trigger the end of the 37 CFR 1.291(b) time period for submitting a protest in a…
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Question: If a published patent application is pending and it is not maintained in the IFW system, will the paper application file itself be available to the public for inspection? Answer: Published applications maintained in the IFW system are available on the USPTO Web site in the public Patent Application Information Retrieval (PAIR) system. If the published patent application is pending and it is not maintained in the IFW system, the paper application file itself will not be available to the public for inspection. Only copies of the application file may be obtained. If the published patent application is abandoned,…
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Question: How is the effective filing date of a claimed invention determined? Answer: The effective filing date of a claimed invention is determined on a claim-by-claim basis. Chapter Details: 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 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer come from section 2133.01 of the MPEP. The following is a brief summary of section 2133.01.…
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Question: How can correspondence filed via the Office electronic filing system be signed? Answer: Correspondence filed via the Office electronic filing system may be signed by a graphic representation of a handwritten signature, or a graphic representation of an S-signature. A graphic representation of a handwritten signature may be created by using a stylus pen and/or touch-pad and that all correspondence, except for a notice of appeal filed in the Office must include a signature. Chapter Details: The answer to this question can be found in chapter 500 of the MPEP. This chapter covers the Receipt and Handling of Mail…
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Question: Who may the substitute statement be signed by for a juristic entity? Answer: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application. The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Chapter Details: For a juristic entity, the substitute statement may be signed by: a person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer), or…
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Question: List two reasons why an international application filed with, or forwarded to, the International Bureau would not need a foreign filing license. Answer: An international application filed with, or forwarded to, the International Bureau must have a foreign filing license unless: (1) the invention was not made in the United States; or (2) a U.S. national application on the invention was filed at least six months prior to the filing of the international application, the U.S. national application is not subject to a secrecy order, and the international application does not contain modifications, amendments, or supplements changing the general…
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Question: If the maintenance fee is due prior to the issuance of a reissue patent, what will paying the maintenance fee maintain? Answer: If the maintenance fee is due prior to the issuance of a reissue patent, the maintenance fee must be paid in the original patent to maintain: (1) the reissue patent in force beyond the end of the applicable grace period and (2) the pendency of any applications for reissue of the original patent. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of Patents. The answer is…
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Question: What is an example of a situation that does not define “substantial utilities”: Answer: The following are examples of situations that do not define “substantial utilities”: (A) Basic research such as studying the properties of the claimed product itself or the mechanisms in which the material is involved; (B) A method of treating an unspecified disease or condition; (C) A method of assaying for or identifying a material that itself has no specific and/or substantial utility; (D) A method of making a material that itself has no specific, substantial, and credible utility; and (E) A claim to an intermediate…
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Question: Can a patent owner avoid double patenting by disclaiming the earlier patent? Answer: “[A] patent owner cannot avoid double patenting by disclaiming the earlier patent.” Chapter Details: The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restrictions in Applications Filed Under35 U.S.C. 111; Double Patenting. The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 804.02 of the MPEP. The following…
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Question: List two concepts and products the courts have identified as examples of laws of nature or natural phenomena. Answer: The courts have identified the following concepts and products as examples of laws of nature or natural phenomena: isolated DNA, Ass’n for Molecular Pathology v. Myriad Genetics, Inc.; a cloned farm animal such as a sheep, In re Roslin Institute (Edinburgh); a correlation between variations in non-coding regions of DNA and allele presence in coding regions of DNA, Genetic Techs. Ltd. v. Merial LLC; a correlation that is the consequence of how a certain compound is metabolized by the body, Mayo Collaborative Servs. v.…
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Question: Name one example of non-limiting claims not directed to any of the statutory categories. Answer: Non-limiting examples of claims that are 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”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations; Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave; and Subject matter that…
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Question: Who is the applicant for a patent? Answer: The applicant for patent is all parties identified as the applicant under 37 CFR 1.42(a). Where the applicant is all of the joint inventors under 37 CFR 1.45, one or more of the joint inventor-applicants may be appointed to represent on behalf of all of the joint inventor-applicants. The power of attorney must be signed by parties identified as the applicant in order to be effective. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP. This chapter covers the Representative of the Applicant or Owner. The…
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Question: What is a mathematical relationship? Answer: A mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words or using mathematical symbols. For example, pressure (p) can be described as the ratio between the magnitude of the normal force (F) and area of the surface on contact (A), or it can be set forth in the form of an equation such as p = F/A. Chapter Details: 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…
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Question: How can patent applications be sent to the U.S. Patent and Trademark Office? Answer: All applications (provisional and nonprovisional) may be sent to the U.S. Patent and Trademark Office by mail using the United States Postal Service, or they may be hand-carried to the Customer Service Window in Alexandria, Virginia. Chapter Details: The answer to this question can be found in chapter 500 of the MPEP. This chapter covers the Receipt and Handling of Mail and Papers. The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or…
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Question: What are the application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees? Answer: Application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees are as follows: (A) For an application not claiming benefit of an earlier application, the actual United States filing date of the application. (B) For an application claiming benefit of an earlier foreign application, the actual United States filing date of the application. (C) For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application, the actual…
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Question: Can social media websites like Facebook be a source of prior art? Answer: Social media websites on the Internet, such as YouTube, Twitter, Facebook, and public forum posts, can be a source of prior art, provided the public accessibility requirements are met. Not all information on social media is considered publicly accessible. Public accessibility is determined on a case-by-case basis taking into consideration factors such as, where the information is posted, privacy restrictions placed on the posting, the length of time it was posted, and whether the information is indexed for searching. Chapter Details: The answer to this question…
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Question: What are the types of papers that may be filed and processed electronically? Answer: Registered users may use EFS-Web to submit web-based documents such as ePetitions, Requests for Withdrawal as Attorney or Agent of Record, and eTerminal Disclaimers. EFS-Web permits registered users to file the following auto-processed ePetitions, requests, and eTerminal Disclaimers: Request for withdrawal as attorney or agent; Petition to withdraw an application from issue, with some restrictions; Petition for revival of an application, with some restrictions; eTerminal Disclaimers for nonprovisional utility applications; and Petition to correct assignee after payment of Issue Fee. Chapter Details: The answer to…
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Question: When does a Markush claim contain an ‘improper Markush grouping’? Answer: A Markush claim contains an “improper Markush grouping” if either: (1) the members of the Markush group do not share a “single structural similarity” or (2) the members do not share a common use. Chapter Details: 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 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This…
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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) all claims of the new application: (1) are either identical to or patentably indistinct from the claims in the earlier application (in other words, restriction would not have been proper if the new or amended claims had been entered in the earlier application), and (2) would…
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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 in accordance with 37 CFR 1.46 no later than issue fee payment. Chapter Details: The answer to this question can be found in chapter 300 of the MPEP. This chapter covers Ownership and Assignment. The answer is from the 9th Edition, Revision 10.2019. Depending on future changes…
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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 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. The request for a corrected publication must: be filed within two months from the date of the patent…
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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 of specific and substantial utility for the invention is not credible. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications. The answer is from the 9th Edition, Revision 08.2017. Depending on future…
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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 not equivalent teachings in the prior art reference itself that may tend to show nonequivalence 37 CFR 1.132 affidavit evidence of facts tending to show nonequivalence. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers…
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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 were held to be invalid by a final decision of a federal court after all appeals; (D) reexamination was ordered for the wrong patent; or (E) reexamination was ordered based on a duplicate copy of the request. Chapter Details: The answer to this question can be…
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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 can be found in chapter 2800 of the MPEP. This chapter covers Supplemental Examination. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.…
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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 provisions of AIA 35 U.S.C. 102(b)(2)(C) in the context of a joint research agreement. What are these three conditions? Answer: 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…
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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 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: U.S. patents; U.S. patent application publications; and certain WIPO published applications. Chapter Details:…
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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 for a ground of unpatentability unless the Board decides that the petition supporting the ground would, if unrebutted, demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The Board’s decision will take into…
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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 to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). have missing lead lines. Lead lines are those lines between the reference characters and the details referred to; contain excessive text or text that…
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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 may not be applicable in later Editions or revisions. Chapter Details: “Correlation” as used herein refers to the relationship between in vitro or in vivo animal model assays and a disclosed or a claimed method of use. An in vitro or in vivo animal model…
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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 relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response. Chapter Details: This question comes from the following supplement “Amendments to the Rules of…
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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 subject to international publication. For international applications filed before July 1, 2014, the written opinion of the International Searching Authority (ISA) is not published but is made available to the public after the expiration of 30 months from the priority date. For international applications filed…
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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 Office. Chapter Details: This question comes from the following supplement “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar…
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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 ground would, if unrebutted, demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including…
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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, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. Chapter Details: The answer to this question can be found…
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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. Chapter Details: This question comes from the following supplement “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.…
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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 Publication rule An abandoned patent application becomes available as prior art only as of the date the public gains access to it. However, the subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent or…
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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 derivation proceedings that implemented provisions of the AIA providing for trials before the Office. These include: Allowing new testimonial evidence to be submitted with a patent owner’s preliminary response Adding a Rule 11-type certification for papers filed in a proceeding Allowing a claim construction approach…
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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 oath or declaration from a prior application may 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. However, if such…
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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 environment; (ii) Contribute to the development or conservation of energy resources; or (iii) Contribute to countering terrorism. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications. The answer is from the…
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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 client unless: The transaction and terms on which the practitioner acquires the interest are fair and reasonable to the client and are fully disclosed and transmitted in writing in a manner that can be reasonably understood by the client; The client is advised in writing…
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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 published under 35 U.S.C. 122(b) is rescinded; and Be signed in compliance with § 1.33(b). Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions. The…
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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 disclosed embodiments (and thus be designated a generic or genus claim). Species always refer to the different embodiments of the invention. Species may be either independent or related as disclosed. Chapter Details: The answer to this question can be found in chapter 800 of the MPEP.…
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Question: What is the definition of a national application as described in chapter 200 of the MPEP? Answer: A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10. Chapter Details: The answer to this question…
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Question: Should a dependent claim that does not specify a further limitation of the subject matter claimed be rejected under 35 USC 112(d)? Answer: Yes, a dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d). When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR…
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Question: What should an examiner’s answer in an appeal include? Answer: An examiner’s answer should include, under appropriate headings, in the order indicated, the following items: (1) Grounds of Rejection to be Reviewed on Appeal. A statement that every ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.” The examiner must treat all pending, rejected claims as being on appeal, and must maintain…
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Question: Is a drawing an essential element of a design patent application? Answer: Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, and that nothing regarding the design sought to be patented is left to conjecture. The design must be represented by a drawing that complies with the requirements and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the…
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Question: When is a drawing usually not considered necessary for the understanding of an invention under 35 USC 113 (first sentence)? Answer: It has been USPTO practice to treat an application that contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the invention under 35 U.S.C. 113 (first sentence). The same practice has been followed in composition applications. Other situations in which drawings are usually not considered necessary for the understanding of the invention under 35 U.S.C. 113 (first sentence) are: (A) Coated articles or products: where…
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Question: What is the difference between applicant information, correspondence information, and application information? Answer: Applicant information includes the name, residence, mailing address, and citizenship of each applicant ( when dealing with pre-AIA 37 CFR 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. (If the applicant is not an inventor, this information also includes the applicant’s authority (pre-AIA 37 CFR 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor. The “mailing address” is the address where applicant…
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Question: What does the Office need at the time of receipt in order to accord the international filing date the date of receipt of the international application? Answer: The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that the Office has found that, at the time of receipt: (i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office, (ii) the international application is in the prescribed language, (iii) the international application contains at least the following…
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Question: What must a petition for an unintentionally delayed claim be filed with? Answer: A petition for an unintentionally delayed claim must be accompanied by: (A) the reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. Chapter Details: The…
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Question: How can petitions to withdraw an application from issue under 37 CFR 1.313(c) be sent to the USPTO? Answer: Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be: (A) mailed to “Mail Stop Petition, Commissioner for Patents”; (B) transmitted by facsimile; (C) hand-carried to the Office of Petitions; or (D) filed via EFS-Web as an ePetition. Chapter Details: The answer to this question can be found in chapter 1300 of the MPEP. This chapter covers Allowance and Issue. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the…
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Question: What should a petition for retroactive license include? Answer: A petition for retroactive license shall include: (1) A listing of each of the foreign countries in which the unlicensed patent application material was filed, (2) The dates on which the material was filed in each country, (3) A verified statement (oath or declaration) containing: (i) An averment that the subject matter in question was not under a secrecy order at the time it was filed abroad, and that it is not currently under a secrecy order, (ii) A showing that the license has been diligently sought after discovery of…
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Question: Can a petition under 37 CFR 1.138(c) stop publication of an application? Answer: A petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication. The petition will be granted when it is recognized in sufficient time to avoid publication of the application. The petition will be denied when it is not recognized in time to avoid publication. Generally, a petition under 37 CFR 1.138(c) will not be granted and the application will be published in regular course unless such…
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Question: Does the petition to make special apply to patent applications for inventions dealing with energy resources? Answer: The U.S. Patent and Trademark Office will, on petition, accord “special” status to all patent applications for inventions which materially contribute to: (A) the discovery or development of energy resources, or (B) the more efficient utilization and conservation of energy resources. Examples of inventions in category (A) would be developments in fossil fuels (natural gas, coal, and petroleum), hydrogen fuel technologies, nuclear energy, solar energy, etc. Category (B) would include inventions relating to the reduction of energy consumption in combustion systems, industrial…
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Question: How can a provisional obviousness rejection be overcome? Answer: A provisional obviousness rejection can be overcome by: Arguing patentability over the earlier filed application; Combining the subject matter of the copending applications into a single application claiming benefit under 35 U.S.C. 120 of the prior applications and abandoning the copending applications Filing an affidavit or declaration under 37 CFR 1.132 showing that any unclaimed invention disclosed in the copending application was derived from the inventor of the other application and is thus not invention “by another”; Filing an affidavit or declaration under 37 CFR 1.131(a) showing a date of invention prior…
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Question: What does the final rule in the “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” state? Answer: In this final rule, the Office revises the rules to provide that a patent claim, or a claim proposed in a motion to amend, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill…
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Question: Have parties to AIA proceedings under Phillips required expanded page limits or otherwise incurred more expenses in their AIA trials than parties in AIA proceedings under BRI? Answer: PTAB has not found that parties to these AIA proceedings under Phillips require expanded page limits or otherwise incur more expense in their AIA trials than parties in AIA proceedings under BRI. The USPTO’s experience is that arguments under Phillips are not more complicated or more lengthy than arguments under the BRI standard. Rather, both standards are familiar to patent practitioners appearing before the USPTO and district courts. Consequently USPTO expects…
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Question: Name one instance when issuance of a NIRC action would be proper in an inter partes reexamination proceeding. Answer: The following are the only instances when issuance of a NIRC action would be proper in an inter partes reexamination proceeding: There is no timely response by the patent owner to an Office action requiring a response. If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). All claims will be canceled by formal examiner’s amendment. After a Right of Appeal Notice (RAN) where no party to the reexamination…
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Question: What should the Applicant Initiated Interview Request form identify? Answer: The Applicant Initiated Interview Request form should identify: the participants of the interview the proposed date of the interview whether the interview will be personal, telephonic, or video conference and should include a brief description of the issues to be discussed. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP. This chapter covers Representative of Inventor or Owner. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not…
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Question: What are the two final rules dealing with the claim construction standard as implemented in the supplement entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”? Answer: In the first final rule, the Office changed the existing rules to, among other things: Increase the page limit for patent owner’s motion to amend by ten pages and allow a claims appendix to be filed with the motion; and increase the page limit for petitioner’s reply to patent owner’s response by ten pages. In the second final rule, the Office…
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Question: Name two types of patents that may not use the provisions of 37 C.F.R. 1.114. Answer: The provisions of 37 C.F.R. 1.114 do not apply to the following types of patents: design patent applications provisional applications applications filed before June 8, 1995 international applications filed before June 8, 1995 an international design application reexamination patents Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or…
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Question: What must an application filed under 37 CFR 1.53(d) be filed before the earliest of? Answer: An application filed under 37 CFR 1.53(d) must be filed before the earliest of: (A) payment of the issue fee on the prior application, unless a petition is granted in the prior application; (B) abandonment of the prior application; or (C) termination of proceedings on the prior application. Chapter Details: The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and Handling of Mail and Papers. The answer is from the 9th Edition, Revision 08.2017.…
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Question: A subject matter eligibility rejection under Step 2 should provide an explanation for each part of the Step 2 analysis; Step 2A and Step 2B. What specifically should a rejection identify under Step 2A? Answer: For Step 2A, the rejection 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. For example, if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that…
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Question: When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” apply? Answer: As shown in the supplement … The changes to the claim construction standard will apply to proceedings where a petition is filed on or after the effective date of the final rule (November 13, 2018). The Office will apply the federal court claim construction standard, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C.…
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Question: List one of the basic characteristics of ex parte reexamination. Answer: The basic characteristics of ex parte reexamination are as follows: Anyone can request reexamination at any time during the period of enforceability of the patent; In ex parte reexaminations, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103. Patents may also be applied in a double patenting rejection; A substantial new question of patentability must be present for reexamination to be ordered; If ordered, the actual reexamination proceeding is ex parte in…
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Question: What is the executive summary of the final rule when dealing with the claim construction standard that took effect on November 13, 2018? Answer: This final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-Smith America Invents Act (‘‘AIA’’) providing for trials before the Office, by replacing the BRI (broadest reasonable interpretation) standard for interpreting unexpired patent claims and substitute claims proposed in a motion to amend with the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b). The rule adopts…
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Question: What does AIA 35 U.S.C. 102(b) discuss? Answer: AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a). Chapter Details: 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 may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 2152 of the MPEP. The following is a brief summary of section 2152. 2152 Detailed…
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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; and Finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP.…
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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 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 may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from…
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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; (2) To prevent the client from engaging in inequitable conduct before the Office or from committing a crime or fraud that is reasonably certain to result in substantial injury to the financial interests or property of another and in furtherance of which the client has…
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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 statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period was unintentional. Chapter Details: The answer to this question can be found in chapter 200 of the MPEP. This chapter covers types and status of…
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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 Co; iv. organizing information through mathematical correlations v. receiving, screening, and distributing email Chapter Details: 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…
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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 documents associated with reexamination proceedings for plant patents. Requests for inter partes review. Any third party inquiries, petitions or papers unless specifically authorized by the EFS-Web Legal Framework (e.g., citation of prior art and written statements in patent files) and/or provided for via dedicated EFS-Web interface (e.g.,…
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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 chapter covers parts, form, and content of application. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer…
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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 publication fee set forth in 37 CFR 1.18(d), (4) the basic filing fee set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c), (5) the search fee set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m),…
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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 inventor, the assignee of record, or the attorney or agent of record. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers secrecy, access, national security, and foreign filing. The answer is from the 9th Edition,…
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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 claim falls, because although in many instances it is clear within which category a claimed invention falls, a claim may satisfy the requirements of more than one category. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP.…
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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”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations; Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave;…
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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 Representation of Others Before the USPTO Final Rules. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.…
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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 filed a foreign or international application directed to the invention disclosed in the U.S. application in a foreign country, or under a multilateral international agreement, that requires publication of applications 18 months after filing (foreign filing or counterpart application); and applicant did not rescind the…
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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 unclear or inadequately supported; (B) Any negative findings with respect to any of the claims because of a lack of novelty, inventive step (non-obviousness) or industrial applicability; (C) Any defects in the form or contents of the international application; (D) Any finding by the examiner…
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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: Where there were no claims found patentable in the Office action, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) terminating prosecution and indicating the status of the claims as canceled. Where at least one claim is found patentable,…
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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 computer-implemented method for manipulating data would not be affected by this provision even if the method organized data for a future tax filing. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability. The answer…
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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 prior copending applications. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers correction of patents. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer…
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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 that a characteristic not disclosed in the reference is inherent. Chapter Details: 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…
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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 any found in nature,’ … are eligible for patent protection.” Chapter Details: 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…
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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 answer to this question can be found in chapter 1200 of the MPEP. This chapter covers appeals. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in…
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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 must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called “judicially recognized exceptions” or simply “exceptions”) are…
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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 answer to this question can be found in chapter 2500 of the MPEP. This chapter covers maintenance fees. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable…
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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 answer to this question can be found in chapter 1400 of the MPEP. This chapter covers correction of patents. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be…
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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 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 may not be applicable in later Editions or revisions. Section Summary:…
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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 exception of compliance with the best mode requirement. Chapter Details: The answer to this question can be found in the following supplement: Inter Partes, Post Grant, and Covered Business Method Review Final Rules. This is a special supplement that at the time of this…
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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 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 may not be applicable in later Editions or revisions.…
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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 partner or has comparable managerial authority in the law firm in which the other practitioner practices, or has direct supervisory authority over the other practitioner, and knows of the conduct at a time when its consequences can be avoided or mitigated but fails to take…
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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; this information includes: Information used in the inventive process, such as: A copy of non-patent literature, A publication application, or A patent used in the inventive process The publication date of an undated document mentioned by the applicant which may qualify as a prior art…
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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 practitioner reasonably believes is criminal or fraudulent; The client has used the practitioner’s services to perpetrate a crime or fraud; A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement; The client fails substantially…
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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 in chapter 2100 of the MPEP. This chapter covers Patentability. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question…
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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 answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 706 of the MPEP. The following is a brief…
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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 this question can be found in chapter 2200 of the MPEP. This chapter covers Citation of Prior Art and Ex Parte Reexamination of Patents. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may…
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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 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. Chapter Details: The answer to this question can be found in the following supplement: Inter Partes, Post Grant, and Covered…
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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 by itself or in another materially different combination. When these factors cannot be shown, such inventions are not distinct. Chapter Details: The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C.…
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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 be found in chapter 2500 of the MPEP. This chapter covers Maintenance Fees. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section…
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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 claim features/limitations/steps) recited in the claim beyond the identified judicial exception; and Explain the reason(s) that the additional elements taken individually, and also taken as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception. Chapter…
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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 time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable. Section Summary: This question and answer comes from the following supplement: Derivation Proceeding Final…
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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 disclosures are the evidence relied upon. (G) testimony given in an interference. Where interference testimony is used, the applicant must point out which parts of the testimony are being relied on; examiners cannot be expected to search the entire interference record for the evidence; (H)…
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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 be completed Chapter Details: The answer to this question can be found in chapter 2300 of the MPEP. This chapter covers Interference Proceedings. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or…
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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 amended) is also acceptable for a withdrawn claim that is being currently amended. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of applications. The answer is from the 9th Edition, Revision 07.2015. Depending…
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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. This chapter covers Parts, form and content of application. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions. Section Summary: This question and answer comes from…
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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 by hand; or (B) that the apparatus as claimed can be used to practice another materially different process. Chapter Details: The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111;…
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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. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable. Section Summary: This question and answer…
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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: A statement that the item of information raises a SNQ and identify the claims for which the SNQ is raised; Where appropriate, a statement that the item of information does not raise a SNQ and identify the claims for which a SNQ is not raised;…
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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 United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This…
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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 and/or governmental entities are included within the scope of the term “any person.” The only “person” who is barred from filing a request for ex parte reexamination of a patent is one who is barred from doing so by the estoppel provisions of AIA 35 U.S.C. 315(e)(1)…
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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 documents, issue fee transmittals and authorizations to charge deposit accounts. Chapter Details: The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and handling of mail and papers. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to…
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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 invention (the enablement requirement); and The best mode contemplated by the inventor of carrying out his invention. Chapter Details: 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…
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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 art) and a written opinion on the question of whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable before having to expend resources for filing fees, translations and other costs; (C) a delay…
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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 term does not include patents for technological inventions. Chapter Details: The answer to this question can be found in the following supplement: Inter Partes, Post Grant, and Covered Business Method Review Final Rules. This is a special supplement that at the time of this recording…
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Question: How can applicants rebut a prima facie case of obviousness based on overlapping ranges? Answer: Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. In addition, an applicant can rebut a presumption of obviousness based on a claimed invention that falls within a prior art range by showing “(1) [t]hat the prior art taught away from the claimed invention…or (2) that there are new and unexpected results relative to the prior art. Chapter Details: The answer to this question can be found in chapter 2100 of the…
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Question: Who must sign the power of attorney for applications filed on or after September 16, 2012? Answer: For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings). An assignee who is not an applicant cannot revoke or appoint power of attorney in a patent application. “Applicant” refers to the inventor or all of the joint inventors or to the person applying for a patent. If a person is applying for a patent, that person (which…
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Question: What must a statement under 37 CFR 1.97(e) state? Answer: A statement under 37 CFR 1.97(e) must state either: That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement, or That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry,…
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Question: When must a third party submission be made? Answer: A third-party submission must be filed prior to the earlier of: The date a notice of allowance is given or mailed in the application; or The later of: (i) Six months after the date on which the application is first published by the Office, or (ii) The date the first rejection under 37 CFR 1.104 of any claim by the examiner is given or mailed during the examination of the application. Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers…
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Question: 35 U.S.C. 322 covers petitions involved in post-grant reviews. 35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered. List two reasons why a petition filed under 35 U.S.C. 321 may be considered. Answer: 35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered only if: (1) The petition is accompanied by payment of the fee established by the Director under 35 U.S.C. 321; (2) The petition identifies all real parties in interest; (3) The petition identifies, in writing and with particularity, each claim challenged, the grounds on which…
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Question: In what two situations is the examiner not responsible for examining the sufficiency of the showing? Answer: The examiner is not responsible for examining the sufficiency of the showing except when: The application claim is subject to a rejection under 35 U.S.C. 102(a) or (e) and the applicant files an interference suggestion instead of attempting to overcome the rejection. In this case the examiner must decide if the applicant’s showing is sufficient to overcome the rejection. If the examiner finds the showing not sufficient, then the rejection under 102(a) or (e) still holds true and the examination of the…
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Question: A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in what situations? Answer: A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in the following situations: To correct inventorship. A correction for failure to claim priority. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of patents. The answer is from the 9th Edition, Revision 07.2015. Depending on…
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Question: List an advantage of filing a CPA compared to a continuation or divisional application. Answer: The following list includes advantages of filing a CPA compared to a continuation or divisional application: The papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b). In addition, the Office will not normally issue a new filing receipt for a CPA. The time delay between the filing date and the first Office action should be less for a CPA than for an application filed…
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Question: List 2 times when a request for continuing examination may be proper. Answer: A request for continued examination may be proper when: An Office action is a final rejection. A Notice of Allowance has issued. An Office action under Ex Parte Quayle (this is a legal proceeding, the details of which are not discussed in the MPEP) has occurred. An application is under appeal by the Board of Appeals and Interferences. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of applications. The answer is from the 9th…
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Question: What may an applicant do in response to a rejection based on failure to claim patent-eligible subject matter? Answer: In response to a rejection based on failure to claim patent-eligible subject matter, applicant may: Amend the claim, e.g., to add additional elements or modify existing elements so that the claim as a whole amounts to significantly more than the judicial exception, and/or Present persuasive arguments or evidence based on a good faith belief as to why the rejection is in error. When evaluating a response, examiners must carefully consider all of applicant’s arguments and evidence rebutting the subject matter…
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Question: When is a reference analogous art to the claimed invention? Answer: A reference is analogous art to the claimed invention if: The reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or The reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Chapter Details: 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 07.2015. Depending…
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Question: What must an appellant file if he or she wishes to reinstate an appeal after prosecution is reopened? Answer: If an appellant wishes to reinstate an appeal after prosecution is reopened, appellant must file a new notice of appeal and a complete new appeal brief. Chapter Details: The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeal. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions. Section Summary: This question and answer…
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Question: An error in a recorded assignment document will be corrected by the Assignment Division provided a “corrective document” is submitted. What items must the “corrective document” include? Answer: The “corrective document” must include the following items: A copy of the original assignment document with the corrections made therein. The corrections must be initialed and dated by the party conveying the interest; and A new Recordation Form Cover Sheet Chapter Details: The answer to this question can be found in chapter 300 of the MPEP. This chapter covers Ownership and Assignment. The answer is from the 9th Edition, Revision 07.2015.…
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Question: What is one consequence that may result where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed? Answer: Where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed, the following consequences would result: If no claim was found patentable at the time that the patent owner fails to take the timely action, a NIRC will immediately be issued. Where at least…
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Question: What is the order of arrangement for the specification? Answer: The following order of arrangement is preferable in framing the specification. (A) Title of the invention. (B) Cross-reference to related applications. (C) Statement regarding federally sponsored research or development. (D) The names of the parties to a joint research agreement (E) Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on compact disc and an incorporation-by-reference of the material on the compact disc. (F) Statement regarding prior disclosures by an inventor or joint inventor. (G) Background of the invention. (H) Brief summary of the…
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Question: Name 2 individuals who may grant written authority to status information in a non-published, pending or abandoned application. Answer: A non-published, pending or abandoned application containing written authority granting access to the requester allows the requester access to status information if it is signed by any of the following individuals: The applicant; A patent practitioner of record; The assignee or an assignee of an undivided part interest; The inventor or a joint inventor; or A registered attorney or agent named in the papers accompanying the application papers Chapter Details: The answer to this question can be found in chapter…
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Question: List 2 requirements of the summary of abstract. Answer: The summary of abstract should preferably be between 50 and 150 words. It should contain the following: (A) Indication of field of invention. (B) Clear indication of the technical problem. (C) Gist of invention’s solution of the problem. (D) Principal use or uses of the invention. (E) Reference numbers of the main technical features placed between parentheses. (F) Where applicable, chemical formula which best characterizes the invention. Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers the Patent Cooperation Treaty.…
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Question: What does 35 U.S.C. 102(a)(2) provide? Answer: AIA 35 U.S.C. 102(a)(2) provides that a person is not entitled to a patent if the claimed invention was described in a patent issued under 35 U.S.C. 151, or in an application for patent published or deemed published under 35 U.S.C. 122(b), in which the patent or application, as the case may be, names another inventor, and was effectively filed before the effective filing date of the claimed invention. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability. The answer is…
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Question: In addition to the list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office, what else must each information disclosure statement include a legible copy of? Answer: In addition to the list of information, each information disclosure statement must also include a legible copy of: (A) Each foreign patent; (B) Each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office; (C) For each cited pending unpublished U.S. application, the application specification including the claims, and any drawings of…
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Question: What must a petition filed on or after September 16, 2012 be accompanied by to correct the inventorship in a patent? Answer: A petition filed on or after September 16, 2012 to correct the inventorship in a patent must be accompanied by all of the following: (1) A statement from each person who is being added as in inventor and each person who is currently named as an inventor. Each inventor’s statement must either agree to the change of inventorship or state that the inventor has no disagreement in regard to the requested change. (2) A statement is required…
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Question: List one way inter partes reexamination differs from ex parte reexamination. Answer: Inter partes reexamination differs from ex parte reexamination in matters of procedure, such as when the third party requester can participate, the types of Office actions and the timing of issuance of the Office actions, and the requirement for identification of the real party in interest. Inter partes reexamination also differs from ex parte reexamination in the estoppel effect it provides as to the third party requesters and when the initiation of a reexamination is prohibited. Inter partes reexamination does not, however, differ from ex parte reexamination…
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Question: List two computer functions recognized to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner. Answer: The courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: Performing repetitive calculations, Receiving, processing, and storing data, Electronically scanning or extracting data from a physical document, Electronic recordkeeping, Automating mental tasks, and Receiving or transmitting data over a network, e.g., using the Internet to gather data. Chapter Details: The answer to this question can be found in the following supplement: July 2015…
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Question: Name two times when an applicant may want to consider an explicit petition for foreign filing licenses. Answer: Explicit petitions for foreign filing licenses may be considered by applicants when: the filing receipt license is not granted; the filing receipt has not yet been issued; there is no corresponding U.S. application; subject matter additional to that already licensed is sought to be licensed; or expedited handling is requested. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing. The answer is from the…
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Question: Name two indicia that a continuing reissue application is being filed. Answer: Indicia that a continuing reissue application is being filed are: A reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration. A specification and/or claims in proper double column reissue format. Amendments in proper format. A statement of assignee ownership and consent by assignee. A correct transmittal letter identifying the application as a reissue filing. An identification of the application as being “a reissue continuation of application number [the parent reissue application]” or “a continuation and reissue of application number [the parent reissue application]”…
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Question: For participation in the Global/IP5 PPH pilot program at the USPTO, does the applicant need to submit a petition fee under 37 C.F.R. 1.17(h). Answer: No, for participation in the Global/IP5 PPH pilot program at the USPTO, the applicant must submit: A request for participation in the Global/IP5 PPH pilot program and a request that the U.S. application be advanced out of turn for examination by order of the Director to expedite the business of the Office under 37 CFR 1.102(a). A petition fee under 37 CFR 1.17(h) is NOT required. Chapter Details: The answer to this question can…
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Question: Name one item the submission of Article 19 amendments should comprise. Answer: The submission of Article 19 amendments should comprise: (i) a complete set of claims in replacement of the claims originally filed (ii) a letter which must indicate the differences between the claims as filed and those as amended plus the basis for the amendments (iii) an optional statement under Article 19 Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers the patent cooperation treaty or PCT. The answer is from the 9th Edition, Revision 07.2015. Depending on…
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Question: What are the grounds for seeking inter partes review limited to compared with post-grant review? Answer: The grounds for seeking inter partes review are limited to issues raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications. In contrast, the grounds for seeking post-grant review include any ground that could be raised under 35 U.S.C. 282(b)(2) or (3). Such 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…
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Question: What is an earlier concluded examination or review of the patent? Answer: An earlier concluded examination or review of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; (C) the examination of the patent in an earlier concluded reexamination or supplemental examination; (D) the review of the patent in an earlier concluded trial by the Patent Trial and Appeal Board, such as a post-grant review, inter partes review, or covered business method review of…
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Question: What must a petition for a derivation proceeding provide? Answer: In a petition for a derivation proceeding, the petitioner must: (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application. Chapter Details: The answer to this question can be found in the PTO supplement known as, “Derivation Proceeding Final Rules”. This supplement covers derivation proceedings. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Section Summary:…
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Question: List two activities that can be used as an indication of commercial exploitation? Answer: The following activities should be used by the examiner as indicia of this subjective commercial intent: Preparation of various contemporaneous “commercial” documents, e.g., orders, invoices, receipts, delivery schedules, etc.; Preparation of price lists and distribution of price quotations; Display of samples to prospective customers; Demonstration of models or prototypes, especially at trade conventions, and even though no orders are actually obtained; Use of an invention where an admission fee is charged; and Advertising in publicity releases, brochures, and various periodicals. Chapter Details: The answer to…
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Question: List two types of information that are considered status information. Answer: Status information of an application means only the following information: whether the application is pending, abandoned, or patented; whether the application has been published; the application number or the serial number plus any one of the filing date of the national application, the international filing date or the date of entry into the national stage; and whether another application claims the benefit of the application Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers secrecy, access, national security…
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Question: List at least 2 fees that are reduced by 75% for micro entities. Answer: The fees which are reduced by 75% for micro entities include filing fees (nonprovisional and provisional), search fees, examination fees, issue fees, and appeal fees for utility, design, plant, and reissue patent applications. Also included are patent maintenance fees including the maintenance fee grace period surcharges as well as the surcharge for a petition to accept a delayed maintenance fee payment in order to reinstate an expired patent, claims fees, application size fees, and the surcharge required by 37 CFR 1.16(f) if either the basic…
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Question: What must any nonstatutory double patenting rejection made under the obviousness analysis make clear? Answer: Any nonstatutory double patenting rejection made under the obviousness analysis should make clear: (A) The differences between the inventions defined by the conflicting claims — a claim in the patent compared to a claim in the application; and (B) The reasons why a person of ordinary skill in the art would conclude that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent. Chapter Details: The answer to this question can…
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Question: When is a nonpublication request not appropriate? Answer: A nonpublication request is not appropriate if applicants have already filed a counterpart foreign or international application in another country, or under a multilateral international agreement, that requires publication of applications at eighteen months after filing. Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers statutory invention registration (SIR)s and pre-grant publications. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions. Section Summary:…
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Question: What may an examiner do after he or she has considered the issues on appeal? Answer: After an appeal brief has been filed and the examiner has considered the issues on appeal, the examiner may: reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner ; allow the application if the examiner determines that the rejections have been overcome and no new ground of rejection is appropriate; or maintain the appeal by conducting an appeal conference and drafting an examiner’s answer. Chapter Details: The answer to this question can be found in chapter…
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Question: Except as provided in 37 C.F.R. 11.107 (b), a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. When does a concurrent conflict of interest exist? Answer: A concurrent conflict of interest exists if: The representation of one client will be directly adverse to another client; or There is a significant risk that the representation of one or more clients will be materially limited by the practitioner’s responsibilities to another client, a former client or a third person or by a personal interest of the practitioner. Chapter Details: The answer to this question…
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Question: What is essential material? Answer: “Essential material” is defined as that which is necessary to: provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor; describe the claimed invention in terms that particularly point out and distinctly claim the invention; or describe the structure, material,…
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Question: What are the two statutory requirements that must be met before a Certificate of Correction for an applicant’s mistake to issue? Answer: Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s mistake may issue. The first statutory requirement concerns the nature, i.e., type, of the mistake for which a correction is sought. The mistake must be: of a clerical nature, of a typographical nature, or a mistake of minor character. The second statutory requirement concerns the nature of the proposed correction. The correction must not involve changes which would: constitute new matter or…
The post MPEP Q & A 92: Statutory Requirements to be Met Before Certificate of Correction for an Applicant’s Mistake to Issue appeared first on Patent Education Series.
Question: List three non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference. Answer: Non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference include: Biological or pharmacological functions or activities; Chemical and physical properties; Phenotype, including functional and structural characteristics; and Structure and form, whether chemical, genetic or physical. Chapter Details: The answer to this question can be found in the PTO supplement known as, 2014 Interim Guidance on Patent Subject Matter Eligibility. This supplement covers subject matter eligibility. This is…
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Question: What 5 conditions should an examiner check for before requiring an applicant to add a claim to provoke an interference? Answer: The 5 conditions an examiner should check for before requiring an applicant to add a claim to provoke an interference include: that the application is otherwise completed that the required claim does not encompass prior art or would not otherwise be barred that the applicant has not stated that the commonly described subject matter is not the applicant’s invention that the application provides adequate support under 35 U.S.C. 112, 1st paragraph for the subject matter of the required claim…
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Question: List 3 examples of concepts courts have found to be laws of nature and natural phenomena. Answer: The types of concepts courts have found to be laws of nature and natural phenomena are shown by these cases, which are intended to be illustrative and not limiting: An isolated DNA; a correlation that is the consequence of how a certain compound is metabolized by the body; electromagnetism to transmit signals; and the chemical principle underlying the union between fatty elements and water. Chapter Details: The answer to this question can be found in the PTO supplement known as, 2014 Interim…
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Question: What does the Patent Prosecution Highway or PPH attempt to accomplish? Answer: The Patent Prosecution Highway, or PPH enables an applicant who receives a positive ruling on patent claims from one participating office to request accelerated prosecution of corresponding claims in another participating office, which allows the applicant to obtain a patentability decision in the second office more quickly. Chapter Details: The answer to this question can be found in the PTO supplement known as, Implementation of the Global and IP5 Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices. This supplement covers the patent prosecution highway or PPH. This…
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Question: List one reason a practitioner should act as an advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness. Answer: A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless: The testimony relates to an uncontested issue; The testimony relates to the nature and value of legal services rendered in the case; or Disqualification of the practitioner would work substantial hardship on the client. Chapter Details: The answer to this question can be found in the…
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Question: If a patent is assigned, will that change the “correspondence address” or “fee address” used for maintenance fee purposes? Answer: An assignment of a patent application or patent does not result in a change of the “correspondence address” or “fee address” for maintenance fee purposes. Chapter Details: The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers maintenance fees. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions. Section Summary: This question and…
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Question: Can the Board defer action on a petition for a derivation proceeding? Answer: The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent…
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Question: Can a division of a fee between practitioners who are not in the same firm may be made? Answer: A division of a fee between practitioners who are not in the same firm may be made only if: The division is in proportion to the services performed by each practitioner or each practitioner assumes joint responsibility for the representation; The client agrees to the arrangement, including the share each practitioner will receive, and the agreement is confirmed in writing; and The total fee is reasonable. Chapter Details: The answer to this question can be found in the PTO supplement…
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Question: Who may file a petition to institute a post-grant review? Answer: A person who is not the patent owner may file a petition to institute a post-grant review, unless the petitioner or real party-in-interest had already filed a civil action challenging the validity of a claim of the patent. A petition may not be filed where the petitioner, the petitioner’s real party-in interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition. Chapter Details: The answer to this question can be found in the PTO supplement known as, “Inter…
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Question: What 3 components (in addition to the mandatory requirements) must an international design application designating the U.S. include? Answer: In addition to the mandatory requirements otherwise required for international design applications, an international design application designating the United States must also include: a claim; indications concerning the identity of the creator (i.e., the inventor); and the inventor’s oath or declaration. Chapter Details: The answer to this question can be found in chapter 2900 of the MPEP. This chapter covers International Design Applications. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the…
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Question: List one item the applicant must establish under 35 U.S.C. 156(a)(1)-(5). Answer: 35 U.S.C. 156(a)(1)-(5) require that the applicant establish that: (1) the patent has not expired before an application under 35 U.S.C. 156(d) was filed (this may be an application for patent term extension under subsection (d)(1) or an application for interim extension under subsection (d)(5)); (2) the patent has never been extended under 35 U.S.C. 156(e)(1); (3) the application for extension is submitted by the owner of record of the patent or its agent to the Office within 60 days of regulatory agency approval of the commercial marketing…
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Question: Is it possible for an assignment in applications filed on or after September 16, 2012 to be utilized as the oath or declaration? Answer: Yes, for applications filed on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (“assignment-statement”), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration. Chapter Details: The answer to this question can be found in chapter 300 of the MPEP. This chapter covers ownership and assignment. The answer is…
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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 not satisfy the enablement requirement and whether any necessary experimentation is ‘undue’ include, but are not limited to: The breadth of the claims; The nature of the invention; The state of the prior art; The level of one of ordinary skill; The level of predictability…
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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 in chapter 2100 of the MPEP. This chapter covers patentability. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions. Section Summary: This question and answer comes…
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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 terminating the reexamination proceeding. (In these instances, no reexamination certificate is issued). The proceeding may be concluded under 37 CFR 1.997(b) with the issuance of a reexamination certificate. The proceeding may be concluded under 37 CFR 1.997(e) where the reexamination proceeding has been merged with…
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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 been charged with infringement under that patent. In addition, a petitioner may not file a petition to institute a covered business method patent review of the patent where the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner is estopped from challenging the…
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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 this question can be found in chapter 2200 of the MPEP. This chapter covers Citation of Prior Art and Ex Parte Reexamination of Patents. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may…
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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 Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 2001 of the MPEP. The following is a brief summary of…
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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 covers Patent Cooperation Treaty. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 1812…
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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; and (B) all parties are in agreement and the inventorship issue is not contested. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of Patents. The answer is from the 9th Edition, Revision 07.2015.…
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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 Content of Application. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 601.05(a) of the MPEP. The following is a…
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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 and process of making and using the invention (the enablement requirement); and The best mode contemplated by the inventor of carrying out his invention. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability. The…
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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 answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 1901 of the MPEP. The following…
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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 a person skilled in the art to clearly recognize that applicant had possession of the claimed invention. An adequate written description of the invention may be shown by any description of sufficient, relevant, identifying characteristics so long as a person skilled in the art would…
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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 can be found in chapter 1400 of the MPEP. This chapter covers Correction of Patents. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or…
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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 of ordinary skill in the art. Second, the long-felt need must not have been satisfied by another before the invention by applicant. Third, the invention must in fact satisfy the long-felt need. Chapter Details: The answer to this question can be found in chapter 700…
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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 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 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in…
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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 combination. Chapter Details: 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 07.2015. Depending on future changes to the MPEP, the question and answer may or may not…
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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 more than one independent and distinct design is presented in the application), and/or an objection (where not prohibited by the Hague Agreement). The grounds of refusal may also be based on applicant’s action, including cancellation of industrial designs in the international design application by amendment or…
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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 as specifically required by the examiner. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the…
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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 Appeals. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 1210 of the MPEP. …
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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 covers Statutory Invention Registration (SIR) and Pre-Grant Publication. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer…
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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 reexamination proceeding. (In these instances, no Reexamination Certificate is issued). The proceeding may be concluded under 37 CFR 1.570(b) with the issuance of a Reexamination Certificate. The proceeding may be concluded under 37 CFR 1.570(e) where the reexamination proceeding has been merged with a reissue…
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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 meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b). Chapter Details: 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 07.2015. Depending on future changes…
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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 paying reduced fees under the rules, a license to a Federal agency resulting from a funding agreement with the agency will not preclude the proper claiming of small entity status. Chapter Details: The answer to this question can be found in chapter 500 of the MPEP. This chapter covers…
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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 months before the effective filing date of the United States application. (B) The foreign and United States applications must be filed by the same applicant, his or her legal representatives or assigns. (C) The foreign application must have actually issued as a patent or inventor’s…
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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 a patent application in the USPTO at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This…
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Question: Who may provoke an interference? Answer: Interferences may be provoked by: an examiner an applicant Chapter Details: The answer to this question can be found in chapter 2300 of the MPEP. This chapter covers Interference Proceedings. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 2304 of the MPEP. The following is a brief summary of section 2304. 2304 Suggesting an Interference An interference may be suggested by…
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Question: What does AIA 35 U.S.C. 102(a) state? Answer: Specifically, AIA 35 U.S.C. 102(a) states that: [a] person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was…
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Question: What are the due dates for paying the maintenance fee without a surcharge? Answer: Due dates for paying without a surcharge are as follows: 3 to 3.5 years after date of issue for first maintenance fee payment 7 to 7.5 years after the date of issue for the second maintenance fee payment 11 to 11.5 years after the date of issue for the third and final maintenance fee payment Chapter Details: The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers Maintenance Fees. The answer is from the 9th Edition, Revision 07.2015. Depending…
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Question: Where must the correspondence address appear in applications filed before September 16, 2012? Answer: The correspondence address in applications filed before September 16, 2012 must appear either in an application data sheet or in a clearly identifiable manner elsewhere in any papers submitted with an application filing. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP. This chapter covers Representative of Inventor or Owner. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions…
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Question: What will a Right of Appeal Notice (RAN) set forth? Answer: The RAN will identify the status of each claim. It will set forth: the grounds of rejection for all claims rejected in the RAN; the reasons why a proposed rejection is not made for all decisions favorable to patentability as to claims that were contested by the third party requester; and the reasons for patentability for all claims “allowed” and not contested by the third party requester. Chapter Details: The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers Optional Inter…
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Question: How can a patent owner get the Office to send correspondence to a different address for the supplemental examination proceeding? Answer: If the patent owner desires the Office to send correspondence to a different address, then a new power of attorney must be filed in the patent for which supplemental examination is requested and in the supplemental examination proceeding, or in the resulting ex parte reexamination proceeding, if ordered. Chapter Details: The answer to this question can be found in chapter 2800 of the MPEP. This chapter covers Supplemental Examination. The answer is from the 9th Edition, Revision 07.2015. Depending…
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Question: Name one type of issue that may trigger a rejection. Answer: Rejections are usually made due to issues with one of the following: unpatentable subject matter or lack of utility (35 U.S.C. 101) issues with novelty (35 U.S.C. 102) issues with obviousness (35 U.S.C. 103) lack of subject matter issues with the written description, enablement and best mode (35 U.S.C. 112) Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP,…
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Question: What must a party wishing to correct a typographical error on a recorded cover sheet submit? Answer: A party who wishes to correct a typographical error on a recorded cover sheet must submit the following: a copy of the originally recorded assignment document (or other document affecting title); a corrected cover sheet; and the required fee for each application or patent to be corrected. Chapter Details: The answer to this question can be found in chapter 300 of the MPEP. This chapter covers Ownership and Assignment. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes…
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Question: When does an item of information raise a substantial new question of patentability or SNQ? Answer: An item of information raises an SNQ where there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether or not the claim is patentable unless the same question was previously raised in another Office proceeding or has already been decided by a final holding of invalidity by a federal court. Chapter Details: The answer to this question can be found in chapter 2800 of the MPEP. This chapter covers Supplemental Examination. The answer is…
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Question: When must the Demand for international preliminary examination be made? Answer: The Demand must be made prior to the expiration of whichever of the following periods expires later: (A) three months from the date of transmittal to the applicant of the international search report or of the declaration referred to in PCT Article 17(2)(a), and of the written opinion; or (B) 22 months from the priority date. Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers the patent cooperation treaty. Section Summary: This question and answer comes from section…
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Question: List two examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality. Answer: Examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality would be: common knowledge in the art; the appearance of the design itself; the specification of a related utility patent; or information provided in the specification. Chapter Details: The answer to this question can be found in chapter 1500 of the MPEP. This chapter covers design patents. Section Summary: This question and answer comes from section 1504.01(c) of…
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Question: Name two ways a patent may be corrected or amended. Answer: A patent may be corrected or amended in seven ways, namely by: reissue, the issuance of a certificate of correction which becomes a part of the patent, disclaimer, reexamination, inter partes review, post grant review, and covered business method review. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers the correction of patents. Section Summary: This question and answer comes from section 1401 of the MPEP. The following is a brief summary of section 1401. 1401 Reissue…
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Question: Name one mechanism in which asexually propagated plants are reproduced. Answer: Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting or inarching. Chapter Details: The answer to this question can be found in chapter 1600 of the MPEP. This chapter covers plant patents. Section Summary: This question and answer comes from section 1601 of the MPEP. The following is a brief summary of section 1601. 1601 Introduction: The Act, Scope, Type of Plants Covered This section provides an introduction to plant patents. Essentially,…
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Question: Why might the USPTO withdraw an application from issue after payment of the issue fee? Answer: The USPTO might withdraw an application from issue after payment of the issue fee due to: (1) a mistake on the part of the Office: (2) a violation of 37 CFR 1.56 or illegality in the application; (3) unpatentability of one or more claims; or (4) for interference or derivation. Chapter Details: The answer to this question can be found in chapter 1300 of the MPEP. This chapter covers allowance and issue. Section Summary: This question and answer comes from section 1308 of the…
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Question: Name two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection. Answer: The following are two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection: A remand to consider an Information Disclosure Statement; and A remand for the examiner to consider a reply brief. Chapter Details: The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeals. Section Summary: This question and…
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Question: List 2 types of applications that will not be published. Answer: The Office will not publish the following applications: Provisional applications; Design applications; International design applications; and Reissue applications (because reissue applications are not kept confidential). Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions. Section Summary: This question and answer comes from section 1120 of the MPEP. The following is a brief summary of section 1120. 1120 Eighteen-Month Publication of Patent Applications This section covers details on…
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Question: What are the most common types of linking claims? Answer: The most common types of linking claims which, if allowable, act to prevent restriction between inventions that can otherwise be shown to be divisible, are (A) genus claims linking species claims; and (B) subcombination claims linking plural combinations. Chapter Details: The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting. Section Summary: This question and answer comes from section 809 of the MPEP. The following is a brief summary of section 809.…
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Question: List 2 non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6. Answer: The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for” Chapter Details: 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 07.2015. Depending on future changes to the MPEP, the…
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Question: List two documents a person acting in a representative capacity may not sign. Answer: A person acting in a representative capacity may not sign: a power of attorney, a document granting access to an application, a change of correspondence address, a terminal disclaimer, or a request for an express abandonment without filing a continuing application. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP 9th Edition, Revision 07.2015. This chapter covers Representative of Applicant or Owner. Depending on future changes to the MPEP, the question and answer may or may not be…
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re Question: List one example of what an oath or declaration must do. Answer: An oath or declaration must: identify the inventor or joint inventor executing the oath or declaration by his or her legal name; identify the application to which it is directed; include a statement the person executing the oath or declaration believes the named inventor or joint inventors to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and state that the application was made or authorized to be made…
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Question: Name one item that an applicant may submit, in addition to a statement regarding common ownership as objective evidence that common ownership existed? Answer: The applicant may submit the following evidence: (A) Reference to assignments recorded in the U.S. Patent and Trademark Office which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s); (B) Copies of unrecorded assignments which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s) are filed in each of the applications; (C) An affidavit or…
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Question: What is a divisional application? Answer: A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed in the earlier or parent application. Chapter Details: The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types, Cross-Noting, and Status of Application. The answer is from the 9th…
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Question: Name one circumstance where joint ownership exists. Answer: Joint ownership occurs when any of the following cases exist: Multiple partial assignees of the patent property; Multiple inventors who have not assigned their right, title and interest; or A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest. Chapter Details: The answer to this question can be found in chapter 300 of the MPEP. This chapter covers Ownership and Assignment. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not…
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Question: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, what must the applicant do? Answer: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, the burden then shifts to the applicant to: show that the Office erred in these findings or provide other evidence to show that the claimed subject matter would have been nonobvious. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability. The answer is from…
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Question: List the 3 categories the elements of an international design application fall into. Answer: The elements of an international design application fall into the following three categories: mandatory contents which include items required in all international design applications. additional mandatory contents which include elements that are required by certain Contracting Parties and therefore are mandatory in any international design application that designates such Contracting Parties. optional contents which are items that may be included in an international design application. Chapter Details: The answer to this question can be found in chapter 2900 of the MPEP. This chapter covers International Design Applications. The answer is…
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Question: Who has the authority to grant access to a pending or abandoned application filed on or after September 16, 2012 that is in confidence? Answer: For applications filed on or after September 16, 2012, the following individuals may provide a written authority for access to a pending or abandoned application kept in confidence: the applicant a patent practitioner of record the assignee or an assignee of an undivided part interest or an inventor Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing. The…
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Question: List two types of filing fees that are reduced by 50% for small entities. Answer: The fees which are reduced by 50% for small entities include patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees, extension of time, revival, and appeal fees, patent issue fees, and maintenance fees on patents. Chapter Details: The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and Handling of Mail and Papers. The answer is from the 9th Edition, Revision 07.2015. Depending on future…
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Question: What are the major differences between AIA 35 U.S.C. 102(c) and the CREATE Act? Answer: The major differences between AIA 35 U.S.C. 102(c) and the CREATE Act are that: the AIA provision is keyed to the effective filing date of the claimed invention, while the CREATE Act focuses on the date that the claimed invention was made; and the CREATE Act provisions only apply to obviousness rejections and not to anticipation rejections. Chapter Details: 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,…
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Question: List two pieces of information regarding the patent that should be submitted when paying the maintenance fee. Answer: The information regarding the patent that should be submitted with the maintenance fee includes: the fee year the amount of the maintenance fee and any surcharge being submitted any assigned customer number whether small entity status is being changed or claimed with the payment the telephone number of person submitting the fee the patent number the application number Chapter Details: The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers Maintenance fees. The answer…
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Question: Under what conditions will a first application usually be granted a Notice of Allowance and become a patent in spite of a second application with potentially interfering claims? Answer: A first application will usually be granted a Notice of Allowance and become a patent when all of the following conditions are met: a first application and a second application claim the same patentable invention; and a first application is in condition for allowance; and the second application is not in condition for allowance Chapter Details: The answer to this question can be found in chapter 2300 of the MPEP.…
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Question: What must a petition under 37 CFR 1.137 be accompanied by? Answer: Specifically, 37 CFR 1.137(b) provides that a grantable petition pursuant to 37 CFR 1.137 must be accompanied by: The reply required to the outstanding Office action or notice; unless previously filed; the petition fee; and a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. Chapter Details: The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers Optional Inter…
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Question: How can a patent owner file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request? Answer: The patent owner has one opportunity to file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request. If the corrected request is compliant with filing date requirements, the Office will grant the corrected request a filing date as of its receipt date. If the correct fees were already paid, the fees do not have to be resubmitted with the corrected request. A corrected request may be filed via the Office’s electronic filing system or in…
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Question: List one of the required elements of a request for ex parte reexamination. Answer: The required elements of a request for ex parte reexamination are as follows: “A statement pointing out each substantial new question of patentability based on prior patents and printed publications.” “An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. “A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied…
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Question: What must a request for reinstatement of all or part of the period of adjustment reduced for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request include? Answer: A request for reinstatement of all or part of the period of adjustment reduced for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument,…
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Question: What should a substantial new question of patentability not be based upon? Answer: A substantial new question cannot be based upon: prior art expressly relied upon by the examiner during the prosecution prior art which was actually discussed Chapter Details: The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers the Citation of Prior Art and Ex Parte Reexamination of Patents. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.…
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Question: What must a protestor give the PTO? Answer: A protestor must give the PTO: a listing of the patents, publications or other information relied upon a copy of each item listed a translation of non-English papers a concise explanation of the relevance of the references proof of service to the applicant Chapter Details: The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protests. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later…
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Question: Who has a duty to disclose? Answer: The following individuals have a duty to disclose: each inventor each registered practitioner each assignee every other person who is substantially involved in the preparation or prosecution of the application the duty does not extend to typists, clerks, and similar personnel the duty does not extend to corporations Chapter Details: The answer to this question can be found in chapter 2000 of the MPEP. This chapter covers the duty to disclose. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may…
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Question: Name two types of plants that are not patentable. Answer: All plants are patentable except: bacteria those that are tuber propagated plants that are not invented or discovered in a cultivated state and asexually reproduced plants that are not obvious Chapter Details: The answer to this question can be found in chapter 1600 of the MPEP. This chapter covers plant patents. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes…
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Question: Who must a disclaimer be signed by in a patent or a reexamination proceeding? Answer: A disclaimer filed in a patent or a reexamination proceeding must be signed by either: the patentee (the assignee, the inventor(s) if the patent is not assigned, or the assignee and the inventors if the patent is assigned-in-part), or an attorney or agent of record. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of Patents. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the…
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Question: List one procedural step that all international applications go through in the International Searching Authority. Answer: The main procedural steps that any international application goes through in the International Searching Authority are: the making of the international search, the preparing of the international search report and for international applications having an international filing date on or after January 1, 2004, the preparing of a written opinion of the International Searching Authority Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers Patent Cooperation Treaty. The answer is from the 9th…
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Question: What must a request for simultaneous issue contain? Answer: The request must contain the following information about each allowed application for which simultaneous issue is requested; application number, filing date, name(s) of inventor(s), title of invention, and date of allowance. Chapter Details: The answer to this question can be found in chapter 1300 of the MPEP. This chapter covers Allowance and Issue. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer…
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Question: What is the term of a utility patent versus the term of a design patent? Answer: The term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from the U.S. filing date; or if the application contains a specific reference to an earlier application, 20 years from the earliest effective U.S. filing date, while the term of a design patent is 15 years measured from the date of grant, if the design application was filed on or after May 13, 2015 (or 14 years if filed before May 13, 2015).…
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Question: What are the two separate and distinct requirements of 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph? Answer: 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph contains two separate and distinct requirements: The first one is that the claim(s) set forth the subject matter applicants regard as the invention, and The second one is that the claim(s) particularly point out and distinctly claim the invention. Chapter Details: 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 07.2015. Depending…
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Question: List two items which are required in an appeal brief. Answer: The specific items required in an appeal brief are: (i) Real party in interest. (ii) Related appeals, interferences, and trials. (iii) Summary of claimed subject matter. (iv) Argument. (v) Claims appendix. Chapter Details: The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeals. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer…
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Question: What is one way an applicant may contest an objection? Answer: An applicant may contest an objection by: asking the examiner to reconsider it. filing a petition to the Commissioner. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers the examination of applications. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question comes from section 706.01 of the MPEP. The following is a…
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Question: What are the two types of double patenting rejections? Answer: There are generally two types of double patenting rejections. One is the “same invention” type double patenting rejection based on 35 U.S.C. 101 which states in the singular that an inventor “may obtain a patent.” The second is the “nonstatutory-type” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent. Chapter Details: The answer to this question can…
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Question: List at least one type of filing that third-party submissions may not be directed to. Answer: Third-party submissions may not be directed to: provisional applications, issued patents, reissue applications, and reexamination proceedings. Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers the Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer…
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Question: List two examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified. Answer: Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are: assignment; security agreement; merger; change of name; license; foreclosure; lien; contract; and joint research agreement. Chapter Details: The answer to this question can be found in chapter 300 of the MPEP. This chapter covers ownership and assignment. This is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may…
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Question: What should an Applicant Initiated Interview Request Form include? Answer: An Applicant Initiated Interview Request Form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP. This chapter covers representative of the applicant or owner. The question is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may…
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Question: List a situation in which drawings are usually not considered necessary for the understanding of the invention. Answer: It has been USPTO practice to treat an application that contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the invention. Other situations in which drawings are usually not considered necessary for the understanding of the invention are: Coated articles or products; Articles made from a particular material or composition; Laminated structures; Articles, apparatus, or systems where sole distinguishing feature is presence of a particular material. Chapter Details:…
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Question: Name two individuals who through written authority may grant access to a provisional application. Answer: In provisional applications, access will only be given to parties with written authority from the following: a named inventor the assignee of record the attorney or agent of record or, for an application filed on or after September 16, 2012, an applicant other than an inventor. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing. The answer is from the 9th Edition, Revision 07.2015. Section Summary: This…
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Question: List two significant differences between nonprovisional applications and provisional applications. Answer: The following list includes significant differences between nonprovisional applications and provisional applications: No claim is required in a provisional application. No oath or declaration is required in a provisional application. Provisional applications will not be examined for patentability. A provisional application is not entitled to claim priority to any foreign application or the benefit of any earlier filed national application. A design patent application is not entitled to claim the benefit of a provisional application Chapter Details: The answer to this question can be found in chapter 200…
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Question: Name two types of correspondence that may not be transmitted by facsimile. Answer: Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: A document that is required by statute to be certified A national patent application specification and drawing (provisional or nonprovisional) or other correspondence for the purpose of obtaining an application filing date, other than a continued prosecution application; An international application for patent; A copy of the international application and the basic national fee necessary to enter the national stage; A third-party submission. Correspondence relating to…
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Question: What are the 3 major types of patent status? Answer: The 3 major types of patent status include: pending applications, abandoned applications, and issued patents. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing. The question and answer is from the 9th Edition, Revision 07.2015. Section Summary: This question specifically comes from section 101 of the MPEP. The following is a brief summary of section 101. 101 General Patent applications must be kept confidential. Approved patents, however, are freely open to…
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