Patent Bar Mpep Q & A Podcast

Question: When is a nonpublication request not appropriate? Answer: A nonpublication request is not appropriate if applicants have already filed a counterpart foreign or international application in another country, or under a multilateral international agreement, that requires publication of applications at eighteen months after filing. Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers statutory invention registration (SIR)s and pre-grant publications. 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:… The post MPEP Q & A 96: When a Nonpublication Request is Not Appropriate appeared first on Patent Education Series.

Question: What may an examiner do after he or she has considered the issues on appeal? Answer: After an appeal brief has been filed and the examiner has considered the issues on appeal, the examiner may: reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner ; allow the application if the examiner determines that the rejections have been overcome and no new ground of rejection is appropriate; or maintain the appeal by conducting an appeal conference and drafting an examiner’s answer. Chapter Details: The answer to this question can be found in chapter… The post MPEP Q & A 95: What an Examiner May Do After Considering the Issues on Appeal appeared first on Patent Education Series.

Question: Except as provided in 37 C.F.R. 11.107 (b), a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. When does a concurrent conflict of interest exist? Answer: A concurrent conflict of interest exists if: The representation of one client will be directly adverse to another client; or There is a significant risk that the representation of one or more clients will be materially limited by the practitioner’s responsibilities to another client, a former client or a third person or by a personal interest of the practitioner. Chapter Details: The answer to this question… The post MPEP Q & A 94: When a Concurrent Conflict of Interest Exists appeared first on Patent Education Series.

Question: What is essential material? Answer: “Essential material” is defined as that which is necessary to: provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor; describe the claimed invention in terms that particularly point out and distinctly claim the invention; or describe the structure, material,… The post MPEP Q & A 93: What is Essential Material appeared first on Patent Education Series.

Question: What are the two statutory requirements that must be met before a Certificate of Correction for an applicant’s mistake to issue? Answer: Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s mistake may issue. The first statutory requirement concerns the nature, i.e., type, of the mistake for which a correction is sought. The mistake must be: of a clerical nature, of a typographical nature, or a mistake of minor character. The second statutory requirement concerns the nature of the proposed correction. The correction must not involve changes which would: constitute new matter or… The post MPEP Q & A 92: Statutory Requirements to be Met Before Certificate of Correction for an Applicant’s Mistake to Issue appeared first on Patent Education Series.

Question: List three non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference. Answer: Non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference include: Biological or pharmacological functions or activities; Chemical and physical properties; Phenotype, including functional and structural characteristics; and Structure and form, whether chemical, genetic or physical. Chapter Details: The answer to this question can be found in the PTO supplement known as, 2014 Interim Guidance on Patent Subject Matter Eligibility. This supplement covers subject matter eligibility. This is… The post MPEP Q & A 91: Non-Limiting Examples of Types of Characteristics Considered by the Courts to Determine Marked Difference appeared first on Patent Education Series.

Question: What 5 conditions should an examiner check for before requiring an applicant to add a claim to provoke an interference? Answer: The 5 conditions an examiner should check for before requiring an applicant to add a claim to provoke an interference include:  that the application is otherwise completed  that the required claim does not encompass prior art or would not otherwise be barred  that the applicant has not stated that the commonly described subject matter is not the applicant’s invention  that the application provides adequate support under 35 U.S.C. 112, 1st paragraph for the subject matter of the required claim… The post MPEP Q & A 90: Conditions an Examiner Should Check for Before Requiring Applicant to Add Claim to Provoke Interference appeared first on Patent Education Series.

Question: List 3 examples of concepts courts have found to be laws of nature and natural phenomena. Answer: The types of concepts courts have found to be laws of nature and natural phenomena are shown by these cases, which are intended to be illustrative and not limiting: An isolated DNA; a correlation that is the consequence of how a certain compound is metabolized by the body; electromagnetism to transmit signals; and the chemical principle underlying the union between fatty elements and water. Chapter Details: The answer to this question can be found in the PTO supplement known as, 2014 Interim… The post MPEP Q & A 89: Concepts the Courts Have Found to be Laws of Nature and Natural Phenomena appeared first on Patent Education Series.

Question: What does the Patent Prosecution Highway or PPH attempt to accomplish? Answer: The Patent Prosecution Highway, or PPH enables an applicant who receives a positive ruling on patent claims from one participating office to request accelerated prosecution of corresponding claims in another participating office, which allows the applicant to obtain a patentability decision in the second office more quickly. Chapter Details: The answer to this question can be found in the PTO supplement known as, Implementation of the Global and IP5 Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices. This supplement covers the patent prosecution highway or PPH. This… The post MPEP Q & A 88: What the Patent Prosecution Highway Attempts to Accomplish appeared first on Patent Education Series.

Question: List one reason a practitioner should act as an advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness. Answer: A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless: The testimony relates to an uncontested issue; The testimony relates to the nature and value of legal services rendered in the case; or Disqualification of the practitioner would work substantial hardship on the client. Chapter Details: The answer to this question can be found in the… The post MPEP Q & A 87: Reasons Practitioner Should Act as an Advocate Before a Tribunal appeared first on Patent Education Series.

Question: If a patent is assigned, will that change the “correspondence address” or “fee address”  used for maintenance fee purposes? Answer: An assignment of a patent application or patent does not result in a change of the “correspondence address” or “fee address” for maintenance fee purposes. Chapter Details: The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers maintenance fees. 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… The post MPEP Q & A 86: Assignment of Patent to Change Address for Maintenance Fee Purposes appeared first on Patent Education Series.

Question: Can the Board defer action on a petition for a derivation proceeding? Answer: The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent… The post MPEP Q & A 85: Board on Deferring Action on a Petition for a Derivation Proceeding appeared first on Patent Education Series.

Question: Can a division of a fee between practitioners who are not in the same firm may be made? Answer: A division of a fee between practitioners who are not in the same firm may be made only if: The division is in proportion to the services performed by each practitioner or each practitioner assumes joint responsibility for the representation; The client agrees to the arrangement, including the share each practitioner will receive, and the agreement is confirmed in writing; and The total fee is reasonable. Chapter Details: The answer to this question can be found in the PTO supplement… The post MPEP Q & A 84: Division of Fees Between Practitioners Not in the Same Firm appeared first on Patent Education Series.

Question: Who may file a petition to institute a post-grant review? Answer: A person who is not the patent owner may file a petition to institute a post-grant review, unless the petitioner or real party-in-interest had already filed a civil action challenging the validity of a claim of the patent. A petition may not be filed where the petitioner, the petitioner’s real party-in interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition. Chapter Details: The answer to this question can be found in the PTO supplement known as, “Inter… The post MPEP Q & A 83: Filing a Petition to Institute a Post-Grant Review appeared first on Patent Education Series.

Question: What 3 components (in addition to the mandatory requirements) must an international design application designating the U.S. include? Answer: In addition to the mandatory requirements otherwise required for international design applications, an international design application designating the United States must also include: a claim; indications concerning the identity of the creator (i.e., the inventor); and the inventor’s oath or declaration. Chapter Details: The answer to this question can be found in chapter 2900 of the MPEP. This chapter covers International Design Applications. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the… The post MPEP Q & A 82: Components International Design Applications Designating the U.S. Must Include appeared first on Patent Education Series.

Question: List one item the applicant must establish under 35 U.S.C. 156(a)(1)-(5). Answer: 35 U.S.C. 156(a)(1)-(5) require that the applicant establish that: (1) the patent has not expired before an application under 35 U.S.C. 156(d) was filed (this may be an application for patent term extension under subsection (d)(1) or an application for interim extension under subsection (d)(5)); (2) the patent has never been extended under 35 U.S.C. 156(e)(1); (3) the application for extension is submitted by the owner of record of the patent or its agent to the Office within 60 days of regulatory agency approval of the commercial marketing… The post MPEP Q & A 81: Items Applicant’s Must Establish Under 35 USC 156 appeared first on Patent Education Series.

Question: Is it possible for an assignment in applications filed on or after September 16, 2012 to be utilized as the oath or declaration? Answer: Yes, for applications filed on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (“assignment-statement”), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration. 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… The post MPEP Q & A 80: Assignments Potentially Utilized as the Oath or Declaration appeared first on Patent Education Series.

Question: List two factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is ‘undue’. Answer: The factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is ‘undue’ include, but are not limited to: The breadth of the claims; The nature of the invention; The state of the prior art; The level of one of ordinary skill; The level of predictability… The post MPEP Q & A 79: Factors When Determining Sufficient Evidence Concerning Enablement Requirement appeared first on Patent Education Series.

Question: Do the changes to 35 U.S.C. 102 and 103 in the AIA apply to applications filed before March 16, 2013? Answer: No, the changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013. 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 on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions. Section Summary: This question and answer comes… The post MPEP Q & A 78: AIA and Applications Filed Before March 16, 2013 appeared first on Patent Education Series.

Question: List one of the ways an inter partes reexamination proceeding may be concluded. Answer: Inter partes reexamination proceedings may be concluded in one of three ways: The prosecution of the reexamination proceeding may be brought to an end, and the proceeding itself concluded, by a denial of reexamination, or vacating the reexamination proceeding, or terminating the reexamination proceeding. (In these instances, no reexamination certificate is issued). The proceeding may be concluded under 37 CFR 1.997(b) with the issuance of a reexamination certificate. The proceeding may be concluded under 37 CFR 1.997(e) where the reexamination proceeding has been merged with… The post MPEP Q & A 77: Conclusion of an Inter Partes Reexamination Proceeding appeared first on Patent Education Series.