Patent Bar Mpep Q & A Podcast

Question: What is the second part of the Alice/Mayo test often referred to as? Answer: The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. An inventive concept “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. v. Merial LLC. Instead, an “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp.… The post MPEP Q & A 265: What is the second part of the Alice/Mayo test often referred to as? appeared first on Patent Education Series.

Question: How do examiners evaluate integration into a practical application? Answer: Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Many of these considerations overlap, and often more than one consideration is relevant to analysis of an additional element. 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… The post MPEP Q & A 264: How do examiners evaluate integration into a practical application? appeared first on Patent Education Series.

Question: How is the markedly different characteristics analysis performed? Answer: The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties, and are evaluated based on what is recited in the claim on a case-by-case basis. If the analysis indicates that a nature-based product limitation does not exhibit markedly different characteristics, then that limitation is a product of nature exception. If the analysis indicates that a nature-based product limitation does have markedly different characteristics, then that limitation is… The post MPEP Q & A 263: How is the markedly different characteristics analysis performed? appeared first on Patent Education Series.

Question: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind. Answer: Examples of claims that do not recite mental processes because they cannot be practically performed in the human mind include: a claim to a method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals, where the claimed GPS receiver calculated pseudoranges that estimated the distance from the GPS receiver to a plurality of satellites, SiRF Tech; a claim to detecting suspicious activity by using network monitors and analyzing… The post MPEP Q & A 262: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind. appeared first on Patent Education Series.

Question: What is meant by a fundamental economic practice or principle? Answer: The courts have used the phrases “fundamental economic practices” or “fundamental economic principles” to describe concepts relating to the economy and commerce. Fundamental economic principles or practices include hedging, insurance, and mitigating risks. The term “fundamental” is not used in the sense of necessarily being “old” or “well-known.” However, being old or well-known may indicate that the practice is fundamental. 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… The post MPEP Q & A 261: What is meant by a fundamental economic practice or principle? appeared first on Patent Education Series.

Question: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time? Answer: The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. “Inventors may apply for a patent jointly even though: they did not physically work together or at the same time, each did not make the same type or amount of contribution, or each did not make a contribution to the subject matter of every claim of the patent.” Chapter Details: The… The post MPEP Q & A 257: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time? appeared first on Patent Education Series.

Question: What type of applications and proceedings may submit photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings via EFS-Web? Answer: Photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings may be submitted via EFS-Web in only the following types of applications and proceedings: (1) Nonprovisional design patent applications, including reissue design patent applications; (2) Provisional applications; (3) Nonprovisional utility patent applications, including reissue utility patent applications; (4) U.S. national stage applications; (5) International design applications; (6) Reexamination proceedings for utility or design patents; (7) Supplemental… The post MPEP Q & A 256: What type of applications and proceedings may submit drawings that are not black and white line drawings via EFS-Web? appeared first on Patent Education Series.

Question: When do members of a Markush group share a ‘single structural similarity’? Answer: Members of a Markush group share a “single structural similarity” when they belong to the same recognized physical or chemical class or to the same art-recognized class (prong 1) and the members of a Markush group share a common function or use when they are disclosed in the specification or known in the art to be functionally equivalent (prong 2). 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… The post MPEP Q & A 255: When do members of a Markush group share a ‘single structural similarity’? appeared first on Patent Education Series.

Question: What must a statement under 37 CFR 1.97(e) state? Answer: A statement under 37 CFR 1.97(e) must state either; that each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement, or that no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry,… The post MPEP Q & A 254: What must a statement under 37 CFR 1.97(e) state? appeared first on Patent Education Series.

Question: What must a claim in dependent form contain? Answer: A claim in dependent form shall contain: (i) a reference to a claim previously set forth, and (ii) then specify a further limitation of the subject matter claimed. 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 Summary: This question and answer… The post MPEP Q & A 253: What must a claim in dependent form contain? appeared first on Patent Education Series.

Question: When the online fee payment in EFS-Web is unavailable, what types of submissions cannot be filed via EFS-Web, since online fee payment must accompany the submission? Answer: When the online fee payment in EFS-Web is unavailable, the following types of submissions cannot be filed via EFS-Web, since online fee payment must accompany the submission: (1) Petitions that require a fee for auto-processing by EFS-Web; (2) Pre-grant publication submissions that require a fee; (3) Third-party preissuance submissions that require a fee; and (4) Web-based Issue Fee Payment. Chapter Details: The answer to this question can be found in chapter 500 of the… The post MPEP Q & A 252: When the online fee payment in EFS-Web is unavailable, what types of submissions cannot be filed via EFS-Web? appeared first on Patent Education Series.

Question: What are the benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) rather than requesting conversion? Answer: Claiming the benefit of the provisional application under 35 U.S.C. 119(e) is less expensive and will result in a longer patent term. The procedure requires the filing of a request in the provisional application for the conversion of the provisional application to a nonprovisional application and the required fee. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form,… The post MPEP Q & A 251: Benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) appeared first on Patent Education Series.

Question: What are examples of situations where ownership must be established? Answer: Examples of situations where ownership must be established are when the assignee who is not the applicant: signs a request for status of an application or gives a power to inspect an application; appoints its own registered attorney or agent to prosecute an application; signs a disclaimer; consents to the filing of a reissue application; or signs a Fee Transmittal. Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner. Chapter Details: The answer to this question can be found in… The post MPEP Q & A 250: What are examples of situations where ownership must be established? appeared first on Patent Education Series.

Question: What happens if a claim for foreign priority is presented after the time period set in 37 CFR 1.55? Answer: If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority. In addition, a petition to accept an unintentionally delayed claim for foreign priority is necessary to correct any error in a foreign priority claim if the correction is sought after expiration of the time period set forth in 37 CFR 1.55. Chapter Details: The… The post MPEP Q & A 249: What happens if a claim for foreign priority is presented after the time period set in 37 CFR 1.55? appeared first on Patent Education Series.

Question: What are the enumerated groupings of abstract ideas defined as? Answer: The enumerated groupings of abstract ideas are defined as: 1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations; 2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and 3) Mental processes – concepts performed in the… The post MPEP Q & A 248: What are the enumerated groupings of abstract ideas defined as? appeared first on Patent Education Series.

Question: When is a protest considered timely? Answer: A protest is timely if (1) filed prior to the date the application was published under 37 CFR 1.211 or the date a notice of allowance was given or mailed, whichever occurs first, or (2) accompanied by written consent of the applicant and filed prior to the date a notice of allowance was given or mailed in the application. Publication under the Patent Cooperation Treaty (PCT) by the World Intellectual Property Organization (WIPO) of an international application would not trigger the end of the 37 CFR 1.291(b) time period for submitting a protest in a… The post MPEP Q & A 247: When is a protest considered timely? appeared first on Patent Education Series.

Question: If a published patent application is pending and it is not maintained in the IFW system, will the paper application file itself be available to the public for inspection? Answer: Published applications maintained in the IFW system are available on the USPTO Web site in the public Patent Application Information Retrieval (PAIR) system. If the published patent application is pending and it is not maintained in the IFW system, the paper application file itself will not be available to the public for inspection. Only copies of the application file may be obtained. If the published patent application is abandoned,… The post MPEP Q & A 246: Will the paper application file itself be available to the public for inspection? appeared first on Patent Education Series.

Question: How is the effective filing date of a claimed invention determined? Answer: The effective filing date of a claimed invention is determined on a claim-by-claim basis. 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 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 come from section 2133.01 of the MPEP.  The following is a brief summary of section 2133.01.… The post MPEP Q & A 245: How is the effective filing date of a claimed invention determined? appeared first on Patent Education Series.

Question: How can correspondence filed via the Office electronic filing system be signed? Answer: Correspondence filed via the Office electronic filing system may be signed by a graphic representation of a handwritten signature, or a graphic representation of an S-signature. A graphic representation of a handwritten signature may be created by using a stylus pen and/or touch-pad and that all correspondence, except for a notice of appeal filed in the Office must include a signature. Chapter Details: The answer to this question can be found in chapter 500 of the MPEP. This chapter covers the Receipt and Handling of Mail… The post MPEP Q & A 244: How can correspondence filed via the Office electronic filing system be signed? appeared first on Patent Education Series.

Question: Who may the substitute statement be signed by for a juristic entity? Answer: 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. Chapter Details: For a juristic entity, the substitute statement may be signed by: a person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer), or… The post MPEP Q & A 243: Who may sign the substitute statement for a juristic entity? appeared first on Patent Education Series.