Patent Bar Mpep Q & A Podcast

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… The post MPEP Q & A 122: Advantages of Filing a CPA Compared to a Continuation or Divisional Application appeared first on Patent Education Series.

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… The post MPEP Q & A 121: Times When a Request for Continuing Examination May be Proper appeared first on Patent Education Series.

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… The post MPEP Q & A 120: What May an Applicant do in Response to a Rejection Based on Failure to Claim Patent-Eligible Subject Matter? appeared first on Patent Education Series.

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… The post MPEP Q & A 119: When is a Reference Analogous Art to the Claimed Invention? appeared first on Patent Education Series.

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… The post MPEP Q & A 118: Item an Appellant Must File If He or She Wishes to Reinstate an Appeal After Prosecution is Reopened appeared first on Patent Education Series.

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.… The post MPEP Q & A 117: Items a ‘Corrective Document’ Must Include? appeared first on Patent Education Series.

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.