Patent Bar Mpep Q & A Podcast

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.

Question: Name one type of issue that may trigger a rejection. Answer: Rejections are usually made due to issues with one of the following: unpatentable subject matter or lack of utility (35 U.S.C. 101) issues with novelty (35 U.S.C. 102) issues with obviousness (35 U.S.C. 103) lack of subject matter issues with the written description, enablement and best mode (35 U.S.C. 112) 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 post MPEP Q & A 48: Type of Issues Triggering Rejections appeared first on Patent Education Series.

Question: What must a party wishing to correct a typographical error on a recorded cover sheet submit? Answer: A party who wishes to correct a typographical error on a recorded cover sheet must submit the following: a copy of the originally recorded assignment document (or other document affecting title); a corrected cover sheet; and the required fee for each application or patent to be corrected. 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. Depending on future changes… The post MPEP Q & A 47: Correction of a Typographical Error on a Recorded Cover Sheet appeared first on Patent Education Series.

Question: When does an item of information raise a substantial new question of patentability or SNQ? Answer: An item of information raises an SNQ where there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether or not the claim is patentable unless the same question was previously raised in another Office proceeding or has already been decided by a final holding of invalidity by a federal court. Chapter Details: The answer to this question can be found in chapter 2800 of the MPEP. This chapter covers Supplemental Examination. The answer is… The post MPEP Q & A 46: Item of Information that Raises a Substantial New Question of Patentability appeared first on Patent Education Series.

Question: When must the Demand for international preliminary examination be made? Answer: The Demand must be made prior to the expiration of whichever of the following periods expires later: (A) three months from the date of transmittal to the applicant of the international search report or of the declaration referred to in PCT Article 17(2)(a), and of the written opinion; or (B) 22 months from the priority date. Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers the patent cooperation treaty. Section Summary: This question and answer comes from section… The post MPEP Q & A 45: Timing of Demand for International Preliminary Examination appeared first on Patent Education Series.

Question: List two examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality. Answer: Examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality would be: common knowledge in the art; the appearance of the design itself; the specification of a related utility patent; or information provided in the specification. Chapter Details: The answer to this question can be found in chapter 1500 of the MPEP. This chapter covers design patents. Section Summary: This question and answer comes from section 1504.01(c)  of… The post MPEP Q & A 44: Proper Evidentiary Basis for a Rejection Under 35 U.S.C. 171 appeared first on Patent Education Series.

Question: Name two ways a patent may be corrected or amended. Answer: A patent may be corrected or amended in seven ways, namely by: reissue, the issuance of a certificate of correction which becomes a part of the patent, disclaimer, reexamination, inter partes review, post grant review, and covered business method review. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers the correction of patents. Section Summary: This question and answer comes from section 1401 of the MPEP.  The following is a brief summary of section 1401. 1401    Reissue… The post MPEP Q & A 43: Ways a Patent May be Corrected or Amended appeared first on Patent Education Series.

Question: Name one mechanism in which asexually propagated plants are reproduced. Answer: Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting or inarching. Chapter Details: The answer to this question can be found in chapter 1600 of the MPEP. This chapter covers plant patents. Section Summary: This question and answer comes from section 1601 of the MPEP.  The following is a brief summary of section 1601. 1601     Introduction: The Act, Scope, Type of Plants Covered This section provides an introduction to plant patents.  Essentially,… The post MPEP Q & A 42: Reproduction of Asexually Propagated Plants appeared first on Patent Education Series.

Question: Why might the USPTO withdraw an application from issue after payment of the issue fee? Answer: The USPTO might withdraw an application from issue after payment of the issue fee due to: (1) a mistake on the part of the Office: (2) a violation of 37 CFR 1.56 or illegality in the application; (3) unpatentability of one or more claims; or (4) for interference or derivation. Chapter Details: The answer to this question can be found in chapter 1300 of the MPEP. This chapter covers allowance and issue. Section Summary: This question and answer comes from section 1308 of the… The post MPEP Q & A 41: Withdrawing an Application From Issue After Payment of the Issue Fee appeared first on Patent Education Series.

Question: Name two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection. Answer: The following are two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection: A remand to consider an Information Disclosure Statement; and A remand for the examiner to consider a reply brief. Chapter Details: The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeals. Section Summary: This question and… The post MPEP Q & A 40: Situations Where There May be a Remand For Examiner Action Not For Further Consideration of a Rejection appeared first on Patent Education Series.