Patent Bar Mpep Q & A Podcast

Question: What is the time limit for establishing the International Search Report and the Written Opinion of the International Searching Authority? Answer: Publication of the international application occurs at 18 months from the earliest priority date or, where there is no priority date, 18 months from the international filing date. The international search report is […] The post MPEP Q & A 216: Time for Establishing ISR and WO of the International Search Authority appeared first on Patent Education Series.

Question: When did the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’ take effect? Answer: This rule is effective May 2, 2016, and applies to all AIA petitions filed on or after the effective date and to any ongoing AIA preliminary proceeding or trial before the […] The post MPEP Q & A 215: When Did Amendments to the Rules of Practice for Trials Before PTAB Take Effect? appeared first on Patent Education Series.

Question: According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’, what are sufficient grounds for a post-grant review? Answer: 37 CFR 42.208 (C) states that Post-grant review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting […] The post MPEP Q & A 214: What are Sufficient Grounds for Post-Grant Review? appeared first on Patent Education Series.

Question: Can attorney arguments take the place of evidence? Answer: No, the arguments of counsel cannot take the place of evidence in the record. Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, […] The post MPEP Q & A 213: Can Attorney Arguments Take the Place of Evidence? appeared first on Patent Education Series.

Question: According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’, what is the number of days before an oral argument for the exchange of exhibits? Answer: The number of days before an oral argument for the exchange of exhibits is at least 7 days. […] The post MPEP Q & A 212: What is the Number of Days Before an Oral Argument for Exchange of Exhibits? appeared first on Patent Education Series.

Question: When may an abandoned application be used as prior art? Answer: An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent [application] is reference[d] in the disclosure of another patent, in a publication, or by voluntary disclosure under former Defensive […] The post MPEP Q & A 211: When May an Abandoned Application be Used as Prior Art? appeared first on Patent Education Series.

Question: What is the executive summary of the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’? Answer: This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for IPR, PGR, CBM, and […] The post MPEP Q & A 210: What is the Executive Summary of the Supplement ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board? appeared first on Patent Education Series.

Question: Does a copy of an oath or declaration from a prior application need to be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012 even if the oath or declaration identifies the application number of the prior application? Answer: Yes, a copy of an […] The post MPEP Q & A 209: Submission of an Oath or Declaration From a Prior Application appeared first on Patent Education Series.

Question: Is it possible to file a petition to make an application special without a fee? Answer: A petition to make an application special may be filed without a fee if the basis for the petition is: (1) The applicant’s age or health; or (2) That the invention will materially: (i) Enhance the quality of […] The post MPEP Q & A 208: Filing a Petition to Make an Application Special Without a Fee appeared first on Patent Education Series.

Question: When can a practitioner enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client? Answer: A practitioner shall not enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a […] The post MPEP Q & A 207: When Can a Practitioner Enter a Business Transaction with a Client appeared first on Patent Education Series.

Question: What are the requirements for an applicant to rescind a nonpublication request? Answer: The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublication request must: Identify the application to which it is directed; State in a conspicuous manner that the request that the application is not to be […] The post MPEP Q & A 206: Requirements for an Applicant to Rescind Nonpublication Requests appeared first on Patent Education Series.

Question: What is the meaning of claims limited to species? Answer: Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a claim may encompass two or more of […] The post MPEP Q & A 205: Meaning of Claims Limited to Species appeared first on Patent Education Series.

Question: What is the definition of a national application as described in chapter 200 of the MPEP? Answer: A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the […] The post MPEP Q & A 204: Definition of a National Application appeared first on Patent Education Series.

Question: Should a dependent claim that does not specify a further limitation of the subject matter claimed be rejected under 35 USC 112(d)? Answer: Yes, a dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d). When two claims in an application comply with […] The post MPEP Q & A 203: Rejections of Dependent Claims Not Specifying a Further Limitation appeared first on Patent Education Series.

Question: What should an examiner’s answer in an appeal include? Answer: An examiner’s answer should include, under appropriate headings, in the order indicated, the following items: (1) Grounds of Rejection to be Reviewed on Appeal. A statement that every ground of rejection set forth in the Office action from which the appeal is taken (as […] The post MPEP Q & A 202: Components of Examiner’s Answer in an Appeal appeared first on Patent Education Series.

Question: Is a drawing an essential element of a design patent application? Answer: Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and […] The post MPEP Q & A 201: Drawings Essential Elements of Design Patent Applications appeared first on Patent Education Series.

Question: When is a drawing usually not considered necessary for the understanding of an invention under 35 USC 113 (first sentence)? Answer: It has been USPTO practice to treat an application that contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the […] The post MPEP Q & A 200: When Drawings Are Not Considered Necessary Under 35 USC 113 appeared first on Patent Education Series.

Question: What is the difference between applicant information, correspondence information, and application information? Answer: Applicant information includes the name, residence, mailing address, and citizenship of each applicant ( when dealing with pre-AIA 37 CFR 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with […] The post MPEP Q & A 199: The Difference Between Applicant Information, Correspondence Information, and Application Information appeared first on Patent Education Series.

Question: What does the Office need at the time of receipt in order to accord the international filing date the date of receipt of the international application? Answer: The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that the Office has found that, at the […] The post MPEP Q & A 198: Items Necessary to Accord the International Filing Date the Date of Receipt of the International Application appeared first on Patent Education Series.

Question: What must a petition for an unintentionally delayed claim be filed with? Answer: A petition for an unintentionally delayed claim must be accompanied by: (A) the reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a […] The post MPEP Q & A 197: What Must a Petition for an Unintentionally Delayed Claim be Filed With? appeared first on Patent Education Series.