Patent Bar Mpep Q & A Podcast

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… The post MPEP Q & A 116: Consequence That May Result Where Patent Owner Fails to Make Timely Appeal After the Issuance of a Right of Appeal Notice appeared first on Patent Education Series.

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… The post MPEP Q & A 115: What is the Order of Arrangement for the Specification? appeared first on Patent Education Series.

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… The post MPEP Q & A 114: Individuals Who May Grant Written Authority to Status Information appeared first on Patent Education Series.

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.… The post MPEP Q & A 113: List 2 Requirements of the Summary of Abstract appeared first on Patent Education Series.

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… The post MPEP Q & A 112: What Does 35 U.S.C. 102(a)(2) Provide? appeared first on Patent Education Series.

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… The post MPEP Q & A 111: What Must Each Information Disclosure Statement Include a Legible Copy Of? appeared first on Patent Education Series.

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… The post MPEP Q & A 110: What a Petition Filed On or After September 16, 2012 Must be Accompanied By to Correct Inventorship in a Patent appeared first on Patent Education Series.

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… The post MPEP Q & A 109: How Inter Partes Reexamination Differs From Ex Parte Reexamination appeared first on Patent Education Series.

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… The post MPEP Q & A 108: Computer Functions Recognized to be Well‐Understood, Routine, and Conventional Functions When They are Claimed in a Merely Generic Manner appeared first on Patent Education Series.

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… The post MPEP Q & A 107: Times When Explicit Petitions for Foreign Filing Licenses May Be Considered by Applicants appeared first on Patent Education Series.

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]”… The post MPEP Q & A 106: Indicia That a Continuing Reissue Application is Being Filed appeared first on Patent Education Series.

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… The post MPEP Q & A 105: Petition Fee Requirements For Participation in the PPH appeared first on Patent Education Series.

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… The post MPEP Q & A 104: What Submission of Article 19 Amendments Should Comprise appeared first on Patent Education Series.

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… The post MPEP Q & A 103: What Grounds for Seeking Inter Partes Review are Limited to Compared with Post-Grant Review appeared first on Patent Education Series.

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… The post MPEP Q & A 102: Earlier Concluded Examination or Review of Patent appeared first on Patent Education Series.

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:… The post MPEP Q & A 101: Petition for a Derivation Proceeding appeared first on Patent Education Series.

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… The post MPEP Q & A 100: Activities Used as an Indication of Commercial Exploitation appeared first on Patent Education Series.

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… The post MPEP Q & A 99: Types of Information Considered Status Information appeared first on Patent Education Series.

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… The post MPEP Q & A 98: Fees Reduced by 75% for Micro Entities appeared first on Patent Education Series.

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… The post MPEP Q & A 97: Nonstatutory Double Patenting Rejection Made Under Obviousness Analysis appeared first on Patent Education Series.