Patent Bar Mpep Q & A Podcast

Question: List one way possession may be shown. Answer: Possession may be shown in many ways. For example, possession may be shown by describing an actual reduction to practice of the claimed invention. Possession may also be shown by a clear depiction of the invention in detailed drawings or in structural chemical formulas which permit a person skilled in the art to clearly recognize that applicant had possession of the claimed invention. An adequate written description of the invention may be shown by any description of sufficient, relevant, identifying characteristics so long as a person skilled in the art would… The post MPEP Q & A 68: Ways in Which Possession May be Shown appeared first on Patent Education Series.

Question: What is the first step of the three-step process for the recapture rule? Answer: The first step of the three-step process for the recapture rule is: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; 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 future changes to the MPEP, the question and answer may or may not be applicable in later Editions or… The post MPEP Q & A 67: First Step of the Recapture Rule appeared first on Patent Education Series.

Question: What three things does the relevance of long-felt need and the failure of others to the issue of obviousness depend on? Answer: The relevance of long-felt need and the failure of others to the issue of obviousness depends on several factors: First, the need must have been a persistent one that was recognized by those of ordinary skill in the art. Second, the long-felt need must not have been satisfied by another before the invention by applicant. Third, the invention must in fact satisfy the long-felt need. Chapter Details: The answer to this question can be found in chapter 700… The post MPEP Q & A 66: Relevance of Long-Felt Need and the Failure of Others appeared first on Patent Education Series.

Question: List one of the underlying factual inquiries of obviousness. Answer: The factual inquiries enunciated by the Court are as follows: Determining the scope and content of the prior art; and Ascertaining the differences between the claimed invention and the prior art; and Resolving the level of ordinary skill in the pertinent art. 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 or may not be applicable in… The post MPEP Q & A 65: Underlying Factual Inquiries of Obviousness appeared first on Patent Education Series.

Question: What is the strongest rationale for combining references? Answer: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. 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 or may not… The post MPEP Q & A 64: Strongest Rationale for Combining References appeared first on Patent Education Series.

Question: What may the grounds of refusal for a notification of refusal be based on? Answer: The grounds of refusal may be in the form of a rejection based on a condition for patentability under title 35, United States Code (which may include 35 U.S.C. 171, 102, 103, or 112), a requirement for restriction (where more than one independent and distinct design is presented in the application), and/or an objection (where not prohibited by the Hague Agreement). The grounds of refusal may also be based on applicant’s action, including cancellation of industrial designs in the international design application by amendment or… The post MPEP Q & A 63: Grounds of Refusal for a Notification of Refusal appeared first on Patent Education Series.

Question: Name one circumstance where an applicant may make amendments. Answer: The applicant may amend: before or after the first Office action and also after the second Office actions; after final rejection, if certain criteria are met; after the date of filing a notice of appeal, if the amendment meets certain criteria; and when and as specifically required by the examiner. 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 Edition, Revision 07.2015. Depending on future changes to the MPEP, the… The post MPEP Q & A 62: Circumstances Where Applicants May Make Amendments appeared first on Patent Education Series.

Question: When does jurisdiction over the proceeding pass to the Board? Answer: Jurisdiction over the proceeding passes to the Board on filing of a reply brief or the expiration of time to file a reply brief. Chapter Details: The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeals. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 1210 of the MPEP. … The post MPEP Q & A 61: Passing Jurisdiction onto the Board appeared first on Patent Education Series.

Question: What must a request for republication include? Answer: A request for republication must include: a copy of the application in compliance with the Office Electronic Filing System (EFS) requirements, the publication fee; and the processing fee. Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers Statutory Invention Registration (SIR) and Pre-Grant Publication. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer… The post MPEP Q & A 60: Contents of a Request for Republication appeared first on Patent Education Series.

Question: What is one way an ex parte reexamination proceeding may be concluded? Answer: Ex parte reexamination proceedings may be concluded in one of four ways: The prosecution of the 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 1.570(b) with the issuance of a Reexamination Certificate. The proceeding may be concluded under 37 CFR 1.570(e) where the reexamination proceeding has been merged with a reissue… The post MPEP Q & A 59: Concluding an Ex Parte Reexamination Proceeding appeared first on Patent Education Series.

Question: Is an electronic publication considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates? Answer: Yes, an electronic publication is considered to be a printed publication within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b). 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… The post MPEP Q & A 58: Electronic Publications as Printed Publications appeared first on Patent Education Series.

Question: List two types of government organizations that cannot qualify as a nonprofit organization. Answer: Government organizations, whether domestic or foreign, cannot qualify as nonprofit organizations. These include: A government research facility or other government-owned corporation could not qualify. Although the Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules, a license to a Federal agency resulting from a funding agreement with the agency will not preclude the proper claiming of small entity status. Chapter Details: The answer to this question can be found in chapter 500 of the MPEP. This chapter covers… The post MPEP Q & A 57: Government Organizations that Cannot Qualify as Nonprofit Organizations appeared first on Patent Education Series.

Question: Name the four conditions which, if all are present, establish a statutory bar under pre-AIA 35 U.S.C. 102(d). Answer: Pre-AIA 35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a statutory bar against the granting of a patent in this country: (A) The foreign application must be filed more than 12 months before the effective filing date of the United States application. (B) The foreign and United States applications must be filed by the same applicant, his or her legal representatives or assigns. (C) The foreign application must have actually issued as a patent or inventor’s… The post MPEP Q & A 56: Four Conditions That Establish a Statutory Bar Under Pre-AIA 35 U.S.C. 102(d) appeared first on Patent Education Series.

Question: What are the two ways in which permission to file a patent application abroad may be obtained? Answer: The two ways in which permission to file a patent application abroad may be obtained include: either a petition for a foreign filing license may be granted, or an applicant may wait 6 months after filing a patent application in the USPTO at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This… The post MPEP Q & A 55: Obtaining Permission to File a Patent Application Abroad appeared first on Patent Education Series.

Question: Who may provoke an interference? Answer: Interferences may be provoked by: an examiner an applicant Chapter Details: The answer to this question can be found in chapter 2300 of the MPEP. This chapter covers Interference Proceedings. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 2304 of the MPEP.  The following is a brief summary of section 2304. 2304 Suggesting an Interference An interference may be suggested by… The post MPEP Q & A 54: Who Interferences May be Provoked By appeared first on Patent Education Series.

Question: What does AIA 35 U.S.C. 102(a) state? Answer: Specifically, AIA 35 U.S.C. 102(a) states that: [a] person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or  (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was… The post MPEP Q & A 53: Details on AIA 35 U.S.C. 102(a) appeared first on Patent Education Series.

Question: What are the due dates for paying the maintenance fee without a surcharge? Answer: Due dates for paying without a surcharge are as follows: 3 to 3.5 years after date of issue for first maintenance fee payment 7 to 7.5 years after the date of issue for the second maintenance fee payment 11 to 11.5 years after the date of issue for the third and final maintenance fee payment 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… The post MPEP Q & A 52: Due Dates for Paying the Maintenance Fee Without a Surcharge appeared first on Patent Education Series.

Question: Where must the correspondence address appear in applications filed before September 16, 2012? Answer: The correspondence address in applications filed before September 16, 2012 must appear either in an application data sheet or in a clearly identifiable manner elsewhere in any papers submitted with an application filing. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP. This chapter covers Representative of Inventor or Owner. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions… The post MPEP Q & A 51: Correspondence Address in Applications Filed Before September 16, 2012 appeared first on Patent Education Series.

Question: What will a Right of Appeal Notice (RAN) set forth? Answer: The RAN will identify the status of each claim. It will set forth: the grounds of rejection for all claims rejected in the RAN; the reasons why a proposed rejection is not made for all decisions favorable to patentability as to claims that were contested by the third party requester; and the reasons for patentability for all claims “allowed” and not contested by the third party requester. Chapter Details: The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers Optional Inter… The post MPEP Q & A 50: What Right of Appeal Notice Sets Forth appeared first on Patent Education Series.

Question: How can a patent owner get the Office to send correspondence to a different address for the supplemental examination proceeding? Answer: If the patent owner desires the Office to send correspondence to a different address, then a new power of attorney must be filed in the patent for which supplemental examination is requested and in the supplemental examination proceeding, or in the resulting ex parte reexamination proceeding, if ordered. Chapter Details: The answer to this question can be found in chapter 2800 of the MPEP. This chapter covers Supplemental Examination. The answer is from the 9th Edition, Revision 07.2015. Depending… The post MPEP Q & A 49: Correspondence to a Different Address for a Supplemental Examination Proceeding appeared first on Patent Education Series.