Patent Bar Mpep Q & A Podcast

Question: When did the derivation rules go into effect? Answer: The derivation rules went into effect 18 months after AIA enactment (March 16, 2013). Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable. Section Summary: This question comes from the following supplement: “Patent Trial and Appeal Board Consolidated Trial Practice… The post MPEP Q & A 291: When did the derivation rules go into effect? appeared first on Patent Education Series.

Question: How should measurements be given within a patent application? Answer: In order to minimize the necessity in the future for converting dimensions given in the English system of measurements to the metric system of measurements when using printed patents as research and prior art search documents, all patent applicants should use the metric (S.I.) units followed by the equivalent English units when describing their inventions in the specifications of patent applications. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application. The answer is… The post MPEP Q & A 290: Use of metric system of measurements in patent applications appeared first on Patent Education Series.

Question: List two situations that are not considered new grounds of rejection? Answer: Where the statutory basis for the rejection remains the same, and the evidence relied upon in support of the rejection remains the same, a change in the discussion of, or rationale in support of, the rejection does not necessarily constitute a new ground of rejection. In addition, if: (A) an amendment under 37 CFR 1.116 [or41.33] proposes to add or amend one or more claims; (B) appellant was advised (through an advisory action) that the amendment would be entered for purposes of appeal; and (C) the advisory… The post MPEP Q & A 289: List two situations that are not considered new grounds of rejection? appeared first on Patent Education Series.

Question: How may an examiner treat an amendment not fully responsive to a non-final Office action? Answer: An examiner may treat an amendment not fully responsive to a non-final Office action by: (A) accepting the amendment as an adequate reply to the non-final Office action to avoid abandonment under 35 U.S.C. 133 and 37 CFR1.135; (B) notifying the applicant that the reply must be completed within the remaining period for reply to the non-final Office action (or within any extension pursuant to 37 CFR 1.136(a)) to avoid abandonment; or (C) setting a new time period for applicant to complete the… The post MPEP Q & A 288: How may an examiner treat an amendment not fully responsive to a non-final Office action? appeared first on Patent Education Series.

Question: When inconsistent information is given for an application data sheet, what submission will govern control according to 37 CFR 1.76(d)(1)? Answer: 37 CFR 1.76(d)(1) provides that the most recent submission will govern (control) with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or by the inventor’s oath or declaration, except that: (1) the most recent application data sheet will govern with respect to foreign priority or domestic benefit claims; and (2) the naming of the inventorship is governed by 37 CFR 1.41 and changes to inventorship or the… The post MPEP Q & A 287: When inconsistent information is given for an application data sheet, what submission will govern control? appeared first on Patent Education Series.

Question: What are the factual inquiries of obviousness enunciated by the Court? Answer: Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows: (A) Determining the scope and content of the prior art; (B) Ascertaining the differences between the claimed invention and the prior art; and (C) 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 10.2019. Depending on future… The post MPEP Q & A 286: What are the factual inquiries of obviousness enunciated by the Court? appeared first on Patent Education Series.

Question: What do the provisions of 37 CFR 1.114, request for continued examination, not apply to? Answer: The provisions of 27 CFR 1.114, Request for continued examination, do not apply to: (1) A provisional application; (2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995; (3) An international application filed under 35 U.S.C.363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371; (4) An application for a design patent; (5) An international design application; or (6) A patent under reexamination. Chapter Details: The answer to… The post MPEP Q & A 285: What don’t the provisions of 37 CFR 1.114 apply to? appeared first on Patent Education Series.

Question: When will a provisional application be given a filing date? Answer: A provisional application filed on or after December 18, 2013 will be given a filing date as of the date a specification, with or without claims, is received in the Office. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application. The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section… The post MPEP Q & A 284: When will a provisional application be given a filing date? appeared first on Patent Education Series.

Question: List at least 3 special cases (those which are advanced out of turn for examination). Answer: The following is a list of special cases (those which are advanced out of turn for examination): (A) Applications on inventions that are deemed of peculiar importance to some branch of the public service and when for that reason the head of some department of the Government requests immediate action and the Director of the USPTO so orders. (B) Applications made special as a result of a petition to make special, a request for prioritized examination, or a request for participation in a… The post MPEP Q & A 283: List of special cases appeared first on Patent Education Series.

Question: Since CPA applications were eliminated for utility and plant applications, what should applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed consider filing? Answer: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. Henceforth, applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE). Chapter Details: The answer to this question can be found in chapter 200… The post MPEP Q & A 282: Continued prosecution application practice for utility and plant applications appeared first on Patent Education Series.

Question: What is the time for reply to a final rejection? Answer: The time for reply to a final rejection is as follows: (A) All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain a form paragraph advising applicant that if the first reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. Thus, a variable reply period will be established. If the last… The post MPEP Q & A 281: Time for reply to final rejection appeared first on Patent Education Series.

Question: When does the revocation of a filing receipt license become effective? Answer: The revocation becomes effective on the date on which the notice is mailed. 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 answer is from the 9th Edition, Revision 10.2019. 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 140 of the MPEP.  The following is a… The post MPEP Q & A 280: When does the revocation of a filing receipt license become effective? appeared first on Patent Education Series.

Question: How can a maintenance fee and any necessary surcharge be made? Answer: The method of payment for the maintenance fee and any necessary surcharge shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order as provided in 37 CFR 1.23(a). If the maintenance fee and any necessary surcharge is sent in any other form, the Office may delay or cancel the credit until collection is made. For example, a personal or other uncertified check drawn on a U.S. bank that is… The post MPEP Q & A 279: Methods of paying a maintenance fee and necessary surcharges appeared first on Patent Education Series.

Question: What does a petition under 37 CFR 1.78(b) require? Answer: A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e)and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR1.78(a)(1)(i) was unintentional. The Director may require additional information where there is a… The post MPEP Q & A 278: Claiming the benefit of a provisional application appeared first on Patent Education Series.

Question: 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee up to 5 months after the end of the time period set to take action except during which circumstances? Answer: 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee asset forth in 37 CFR 1.17(a) up to 5 months after the end of the time period set to take action except: (A) where prohibited by statute, (B) where prohibited by one of the items listed in the rule, or (C) where applicant has been… The post MPEP Q & A 277: Exceptions to extensions of time appeared first on Patent Education Series.

Question: What are some examples of rationales that may support a conclusion of obviousness? Answer: Examples of rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) “Obvious to try” – choosing from a finite number of identified, predictable… The post MPEP Q & A 276: Examples of exemplary rationales of a prima facie case of obviousness appeared first on Patent Education Series.

Question: What actions should happen if an examiner discovers new matter in a substitute or additional drawing? Answer: If the examiner discovers new matter in a substitute or additional drawing, the drawing should not be entered and the examiner should describe the new matter that resulted in non-entry in the next Office action. A new drawing without such new matter maybe required if the examiner determines that a drawing is needed under 37 CFR 1.81 or 37 CFR 1.83.  The examiner’s decision would be reviewable by filing a petition under 37 CFR 1.181.The Technology Center (TC) Director would decide such… The post MPEP Q & A 275: Receipt of drawing after the filing date appeared first on Patent Education Series.

Question: During what conditions would the complete file wrapper and contents of a patent application published in redacted form not be available? Answer: If an application was published in redacted form, the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; and the application is still pending. 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 answer is from the… The post MPEP Q & A 274: Inspection of patent files by the public appeared first on Patent Education Series.

Question: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee? Answer: Yes, requests for ex parte reexamination filed on or after January 16, 2018 may be filed with a reduced filing fee. This reexamination filing option was created to make it financially less burdensome for requesters with limited resources. Chapter Details: The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers Citation of Prior Art and Ex Parte Reexamination of Patents. The answer is from the 9th Edition, Revision 10.2019. Depending on future changes… The post MPEP Q & A 273: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee? appeared first on Patent Education Series.

Question: Name a limitation that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception. Answer: Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include: Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g.,a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer; Simply appending well-understood, routine, conventional activities… The post MPEP Q & A 272: Limitation that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception. appeared first on Patent Education Series.