Patent Bar Mpep Q & A Podcast

Question: What three items must any assignment-related document for patent matters submitted by facsimile include? Answer: Any assignment-related document for patent matters submitted by facsimile must include: (A) an identified application or patent number; (B) one cover sheet to record a single transaction; and (C) payment of the recordation fee by a credit card, is […] The post MPEP Q & A 319: What must any assignment-related document for patent matters submitted by facsimile include? appeared first on Patent Education Series.

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

Question: How can you determine whether the original patent requirement is satisfied in a reissue application? Answer: Examiners should review the reissue application to determine whether the original patent requirement is satisfied, by considering if: (A) the claims presented in the reissue application are described in the original patent specification and enabled by the original […] The post MPEP Q & A 317: How can you determine whether the original patent requirement is satisfied in a reissue application? appeared first on Patent Education Series.

Question: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, is it ever necessary to change the inventorship named in the application? Answer: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, it may become necessary to […] The post MPEP Q & A 316: Is it ever necessary to change the inventorship named in the application? appeared first on Patent Education Series.

Question: List two examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use and, therefore, do not define “substantial utilities.” Answer: The following are examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” […] The post MPEP Q & A 315: List examples of situations that confirm a “real world” context of use. appeared first on Patent Education Series.

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 lacks a material limitation in a challenged claim; The prior art does not teach or suggest a combination that the petitioner is advocating; The petitioner’s claim interpretation for the challenged claims is unreasonable; If a PGR or CBM petition raises 35 U.S.C. 101 grounds, a… The post MPEP Q & A 308: What type of arguments should a patent owner preliminary response include? appeared first on Patent Education Series.

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 file and a “Sequence Listing XML” submitted as an XML file on a read-only optical disc which are cited in a paper IDS. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content… 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 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: Agreeing to the terms of the protective order requested by the petitioner;… 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… The post MPEP Q & A 305: What must the supplemental search fee be accompanied by in addition to the payment? appeared first on Patent Education Series.

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… The post MPEP Q & A 304: What does routine discovery include? appeared first on Patent Education Series.

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… The post MPEP Q & A 303: What should a certificate of correction filed via the patent electronic filing system use as the document description? appeared first on Patent Education Series.

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… The post MPEP Q & A 301: What does the prohibition on ex parte communications not extend to? appeared first on Patent Education Series.

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.