Patent Bar Mpep Q & A Podcast

Question: AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or subject to an obligation of assignment to the same person in applying common ownership […] The post MPEP Q & A 222: What are the Three Conditions That Must be Satisfied …? appeared first on Patent Education Series.

Question: AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor. What are they? Answer: AIA 35 U.S.C. 102(a)(2) sets forth three types of […] The post MPEP Q & A 221: What are the Three Types of Patent Documents Available as Prior Art …? appeared first on Patent Education Series.

Question: What was Section 42.208 paragraph (c) amended to in the supplement entitled: Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board? Answer: Section 42.208 is amended by revising paragraph (c) to read as follows: * * * * * (c) Sufficient grounds. Post-grant review shall not be instituted […] The post MPEP Q & A 220: What are the Section 42.208 paragraph (c) Amendments? appeared first on Patent Education Series.

Question: When may the OPAP object to and require corrected drawings within a set time period? Answer: The OPAP may object to and require corrected drawings within a set time period, if the drawings: have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough […] The post MPEP Q & A 219: When may the OPAP object to and require corrected drawings within a set time period? appeared first on Patent Education Series.

Question: What is the issue of correlation as related to matters of invitro/in vivo? Answer: 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 08.2017. Depending on future changes to the MPEP, the question and answer may or […] The post MPEP Q & A 218: What is the issue of correlation about as related to matters of invitro/in vivo? appeared first on Patent Education Series.

Question: What was Section 42.23 paragraph (b) amended to in the supplement entitled: Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board? Answer: Section 42.23 is amended by revising paragraph (b) to read as follows: 42.23 Oppositions and replies. * * * * * (b) All arguments for the […] The post MPEP Q & A 217: What are the Section 42.23 paragraph (b) Amendments? appeared first on Patent Education Series.

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.