Patent Bar Mpep Q & A Podcast

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… The post MPEP Q & A 128: Individuals Who May Sign the Power of Attorney for Applications Filed On or After September 16, 2012 appeared first on Patent Education Series.

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,… The post MPEP Q & A 127: What Must a Statement Under 37 CFR 1.97(e) State? appeared first on Patent Education Series.

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… The post MPEP Q & A 126: Time When a Third Party Submission Must be Made appeared first on Patent Education Series.

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… The post MPEP Q & A 125: Reasons Why a Petition Filed Under 35 U.S.C. 321 May be Considered appeared first on Patent Education Series.

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… The post MPEP Q & A 124: Situations Where the Examiner is Not Responsible for Examining the Sufficiency of the Showing appeared first on Patent Education Series.

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… The post MPEP Q & A 123: What Situation May a Certificate of Correction be Used In Order to Correct an Issued Patent as Long as the Filing Was Made Without Deceptive Intent? appeared first on Patent Education Series.

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.