Patent Bar Mpep Q & A Podcast

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.

Question: List two reasons why an international application filed with, or forwarded to, the International Bureau would not need a foreign filing license. Answer: An international application filed with, or forwarded to, the International Bureau must have a foreign filing license unless: (1) the invention was not made in the United States; or (2) a U.S. national application on the invention was filed at least six months prior to the filing of the international application, the U.S. national application is not subject to a secrecy order, and the international application does not contain modifications, amendments, or supplements changing the general… The post MPEP Q & A 242: When will an international application not need a foreign filing license? appeared first on Patent Education Series.

Question: If the maintenance fee is due prior to the issuance of a reissue patent, what will paying the maintenance fee maintain? Answer: If the maintenance fee is due prior to the issuance of a reissue patent, the maintenance fee must be paid in the original patent to maintain: (1) the reissue patent in force beyond the end of the applicable grace period and (2) the pendency of any applications for reissue of the original patent. 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… The post MPEP Q & A 241: Paying maintenance fee due prior to the issuance of a reissue patent appeared first on Patent Education Series.

Question: What is an example of a situation that does not define “substantial utilities”: Answer: The following are examples of situations that do not define “substantial utilities”: (A) Basic research such as studying the properties of the claimed product itself or the mechanisms in which the material is involved; (B) A method of treating an unspecified disease or condition; (C) A method of assaying for or identifying a material that itself has no specific and/or substantial utility; (D) A method of making a material that itself has no specific, substantial, and credible utility; and (E) A claim to an intermediate… The post MPEP Q & A 240: What is an example of a situation that does not define ‘substantial utilities’? appeared first on Patent Education Series.

Question: Can a patent owner avoid double patenting by disclaiming the earlier patent? Answer: “[A] patent owner cannot avoid double patenting by disclaiming the earlier patent.” Chapter Details: The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restrictions in Applications Filed Under35 U.S.C. 111; Double Patenting. 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 804.02 of the MPEP.  The following… The post MPEP Q & A 239: Can a patent owner avoid double patenting by disclaiming the earlier patent? appeared first on Patent Education Series.

Question: List two concepts and products the courts have identified as examples of laws of nature or natural phenomena. Answer: The courts have identified the following concepts and products as examples of laws of nature or natural phenomena: isolated DNA, Ass’n for Molecular Pathology v. Myriad Genetics, Inc.; a cloned farm animal such as a sheep, In re Roslin Institute (Edinburgh); a correlation between variations in non-coding regions of DNA and allele presence in coding regions of DNA, Genetic Techs. Ltd. v. Merial LLC; a correlation that is the consequence of how a certain compound is metabolized by the body, Mayo Collaborative Servs. v.… The post MPEP Q & A 238: What are examples of laws of nature or natural phenomena? appeared first on Patent Education Series.

Question: Name one example of non-limiting claims not directed to any of the statutory categories. Answer: Non-limiting examples of claims that are not directed to any of the statutory categories include: Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations; Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave; and Subject matter that… The post MPEP Q & A 237: What is an example of non-limiting claims not directed to statutory categories? appeared first on Patent Education Series.

Question: Who is the applicant for a patent? Answer: The applicant for patent is all parties identified as the applicant under 37 CFR 1.42(a). Where the applicant is all of the joint inventors under 37 CFR 1.45, one or more of the joint inventor-applicants may be appointed to represent on behalf of all of the joint inventor-applicants. The power of attorney must be signed by parties identified as the applicant in order to be effective. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP. This chapter covers the Representative of the Applicant or Owner. The… The post MPEP Q & A 236: Who is the applicant for a patent? appeared first on Patent Education Series.

Question: What is a mathematical relationship? Answer: A mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words or using mathematical symbols. For example, pressure (p) can be described as the ratio between the magnitude of the normal force (F) and area of the surface on contact (A), or it can be set forth in the form of an equation such as p = F/A. 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 235: What is a mathematical relationship? appeared first on Patent Education Series.

Question: How can patent applications be sent to the U.S. Patent and Trademark Office? Answer: All applications (provisional and nonprovisional) may be sent to the U.S. Patent and Trademark Office by mail using the United States Postal Service, or they may be hand-carried to the Customer Service Window in Alexandria, Virginia. Chapter Details: The answer […] The post MPEP Q & A 234: How can patent applications be sent to the USPTO? appeared first on Patent Education Series.

Question: What are the application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees? Answer: Application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees are as follows: (A) For an application not claiming benefit of an earlier application, the actual […] The post MPEP Q & A 233: List application filing dates for determining whether patent is subject to maintenance fees appeared first on Patent Education Series.

Question: Can social media websites like Facebook be a source of prior art? Answer: Social media websites on the Internet, such as YouTube, Twitter, Facebook, and public forum posts, can be a source of prior art, provided the public accessibility requirements are met. Not all information on social media is considered publicly accessible. Public accessibility […] The post MPEP Q & A 232: Can social media websites be a source of prior art? appeared first on Patent Education Series.

Question: What are the types of papers that may be filed and processed electronically? Answer: Registered users may use EFS-Web to submit web-based documents such as ePetitions, Requests for Withdrawal as Attorney or Agent of Record, and eTerminal Disclaimers. EFS-Web permits registered users to file the following auto-processed ePetitions, requests, and eTerminal Disclaimers: Request for […] The post MPEP Q & A 231: Types of papers that may be filed and processed electronically appeared first on Patent Education Series.

Question: When does a Markush claim contain an ‘improper Markush grouping’? Answer: A Markush claim contains an “improper Markush grouping” if either: (1) the members of the Markush group do not share a “single structural similarity” or (2) the members do not share a common use. Chapter Details: The answer to this question can be […] The post MPEP Q & A 230: What is an ‘improper Markush grouping’? appeared first on Patent Education Series.

Question: When may the claims of a new application be finally rejected in the first Office action? Answer: The claims of a new application may be finally rejected in the first Office action in those situations where: (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) […] The post MPEP Q & A 229: When are the claims of a new application finally rejected in the first Office action? appeared first on Patent Education Series.