Patent Bar Mpep Q & A Podcast

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.

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… The post MPEP Q & A 297: List two situations where a certificate of correction may not be appropriate. appeared first on Patent Education Series.

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… The post MPEP Q & A 295: Which of the new trial proceedings can the patent owner file a preliminary response for? appeared first on Patent Education Series.

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… The post MPEP Q & A 294: What are the two aspects every requirement to restrict has? appeared first on Patent Education Series.

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… The post MPEP Q & A 293: Who conducts derivation proceedings, inter partes reviews, and post-grant reviews? appeared first on Patent Education Series.

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… The post MPEP Q & A 292: Two changes the Hague Agreement Article 16(1) provides appeared first on Patent Education Series.