Patent Bar Mpep Q & A Podcast

Question: List two documents a person acting in a representative capacity may not sign. Answer: A person acting in a representative capacity may not sign: a power of attorney, a document granting access to an application, a change of correspondence address, a terminal disclaimer, or a request for an express abandonment without filing a continuing application. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP 9th Edition, Revision 07.2015. This chapter covers Representative of Applicant or Owner. Depending on future changes to the MPEP, the question and answer may or may not be… The post MPEP Q & A 36: Documents a Person Acting in a Representative Capacity May Not Sign appeared first on Patent Education Series.

re   Question: List one example of what an oath or declaration must do. Answer: An oath or declaration must: identify the inventor or joint inventor executing the oath or declaration by his or her legal name; identify the application to which it is directed; include a statement the person executing the oath or declaration believes the named inventor or joint inventors to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and state that the application was made or authorized to be made… The post MPEP Q & A 35: Example of What an Oath or Declaration Must Do appeared first on Patent Education Series.

Question: Name one item that an applicant may submit, in addition to a statement regarding common ownership as objective evidence that common ownership existed? Answer: The applicant may submit the following evidence: (A) Reference to assignments recorded in the U.S. Patent and Trademark Office which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s); (B) Copies of unrecorded assignments which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s) are filed in each of the applications; (C) An affidavit or… The post MPEP Q & A 34: Item an Applicant May Submit as Objective Evidence That Common Ownership Existed appeared first on Patent Education Series.

Question: What is a divisional application? Answer: A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed in the earlier or parent application. Chapter Details: The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types, Cross-Noting, and Status of Application. The answer is from the 9th… The post MPEP Q & A 33: What is a Divisional Application? appeared first on Patent Education Series.

Question: Name one circumstance where joint ownership exists. Answer: Joint ownership occurs when any of the following cases exist: Multiple partial assignees of the patent property; Multiple inventors who have not assigned their right, title and interest; or A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest. 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 to the MPEP, the question and answer may or may not… The post MPEP Q & A 32: Circumstance Where Joint Ownership Exists appeared first on Patent Education Series.

Question: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, what must the applicant do? Answer: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, the burden then shifts to the applicant to: show that the Office erred in these findings or provide other evidence to show that the claimed subject matter would have been nonobvious. 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 post MPEP Q & A 31: Applicant Action After Invention is Found Obvious appeared first on Patent Education Series.

Question: List the 3 categories the elements of an international design application fall into. Answer: The elements of an international design application fall into the following three categories: mandatory contents which include items required in all international design applications. additional mandatory contents which include elements that are required by certain Contracting Parties and therefore are mandatory in any international design application that designates such Contracting Parties. optional contents which are items that may be included in an international design application. 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… The post MPEP Q & A 30: Elements of an International Design Application appeared first on Patent Education Series.

Question: Who has the authority to grant access to a pending or abandoned application filed on or after September 16, 2012 that is in confidence? Answer: For applications filed on or after September 16, 2012, the following individuals may provide a written authority for access to a pending or abandoned application kept in confidence: the applicant a patent practitioner of record the assignee or an assignee of an undivided part interest or an inventor 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… The post MPEP Q & A 29: Access to a Pending or Abandoned Application Filed On or After September 16, 2012 appeared first on Patent Education Series.

Question: List two types of filing fees that are reduced by 50% for small entities. Answer: The fees which are reduced by 50% for small entities include patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees, extension of time, revival, and appeal fees, patent issue fees, and maintenance fees on patents. Chapter Details: The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and Handling of Mail and Papers. The answer is from the 9th Edition, Revision 07.2015. Depending on future… The post MPEP Q & A 28: Filing Fees Reduced by 50% for Small Entities appeared first on Patent Education Series.

Question: What are the major differences between AIA 35 U.S.C. 102(c) and the CREATE Act? Answer: The major differences between AIA 35 U.S.C. 102(c) and the CREATE Act are that: the AIA provision is keyed to the effective filing date of the claimed invention, while the CREATE Act focuses on the date that the claimed invention was made; and the CREATE Act provisions only apply to obviousness rejections and not to anticipation rejections. 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,… The post MPEP Q & A 27: Difference Between AIA 35 USC 102(c) and the CREATE Act appeared first on Patent Education Series.

Question: List two pieces of information regarding the patent that should be submitted when paying the maintenance fee. Answer: The information regarding the patent that should be submitted with the maintenance fee includes: the fee year the amount of the maintenance fee and any surcharge being submitted any assigned customer number whether small entity status is being changed or claimed with the payment the telephone number of person submitting the fee the patent number the application number Chapter Details: The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers Maintenance fees. The answer… The post MPEP Q & A 26: Information Submitted When Paying Maintenance Fee appeared first on Patent Education Series.

Question: Under what conditions will a first application usually be granted a Notice of Allowance and become a patent in spite of a second application with potentially interfering claims? Answer: A first application will usually be granted a Notice of Allowance and become a patent when all of the following conditions are met: a first application and a second application claim the same patentable invention; and a first application is in condition for allowance; and the second application is not in condition for allowance Chapter Details: The answer to this question can be found in chapter 2300 of the MPEP.… The post MPEP Q & A 25: Conditions for First Application to be Granted a Notice of Allowance appeared first on Patent Education Series.

Question: What must a petition under 37 CFR 1.137 be accompanied by? Answer: Specifically, 37 CFR 1.137(b) provides that a grantable petition pursuant to 37 CFR 1.137 must be accompanied by: The reply required to the outstanding Office action or notice; unless previously filed; the petition fee; and a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. 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 24: Petitions Under 37 CFR 1.137 appeared first on Patent Education Series.

Question: How can a patent owner file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request? Answer: The patent owner has one opportunity to file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request. If the corrected request is compliant with filing date requirements, the Office will grant the corrected request a filing date as of its receipt date. If the correct fees were already paid, the fees do not have to be resubmitted with the corrected request. A corrected request may be filed via the Office’s electronic filing system or in… The post MPEP Q & A 23: Response to a Notice of Noncompliant Supplemental Examination Request appeared first on Patent Education Series.

Question: List one of the required elements of a request for ex parte reexamination. Answer: The required elements of a request for ex parte reexamination are as follows: “A statement pointing out each substantial new question of patentability based on prior patents and printed publications.” “An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. “A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied… The post MPEP Q & A 22: Required Elements of a Request for Ex Parte Reexamination appeared first on Patent Education Series.

Question: What must a request for reinstatement of all or part of the period of adjustment reduced for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request include? Answer: A request for reinstatement of all or part of the period of adjustment reduced for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument,… The post MPEP Q & A 21: Request for Reinstatement of All or Part of the Period of Adjustment appeared first on Patent Education Series.

Question: What should a substantial new question of patentability not be based upon? Answer: A substantial new question cannot be based upon: prior art expressly relied upon by the examiner during the prosecution prior art which was actually discussed Chapter Details: The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers the Citation of Prior Art and Ex Parte Reexamination 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 revisions.… The post MPEP Q & A 20: Details of Substantial New Question of Patentability appeared first on Patent Education Series.

Question: What must a protestor give the PTO? Answer: A protestor must give the PTO: a listing of the patents, publications or other information relied upon a copy of each item listed a translation of non-English papers a concise explanation of the relevance of the references proof of service to the applicant Chapter Details: The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protests. 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… The post MPEP Q & A 19: Items a Protestor Must Give the PTO appeared first on Patent Education Series.

Question: Who has a duty to disclose? Answer: The following individuals have a duty to disclose: each inventor each registered practitioner each assignee every other person who is substantially involved in the preparation or prosecution of the application the duty does not extend to typists, clerks, and similar personnel the duty does not extend to corporations Chapter Details: The answer to this question can be found in chapter 2000 of the MPEP. This chapter covers the duty to disclose. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may… The post MPEP Q & A 18: Duty to Disclose appeared first on Patent Education Series.

Question: Name two types of plants that are not patentable. Answer: All plants are patentable except: bacteria those that are tuber propagated plants that are not invented or discovered in a cultivated state and asexually reproduced plants that are not obvious Chapter Details: The answer to this question can be found in chapter 1600 of the MPEP. This chapter covers plant 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 revisions. Section Summary: This question and answer comes… The post MPEP Q & A 17: Plants That are Not Patentable appeared first on Patent Education Series.