Patent Bar Mpep Q & A Podcast

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.

Question: How can petitions to withdraw an application from issue under 37 CFR 1.313(c) be sent to the USPTO? Answer: Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be: (A) mailed to “Mail Stop Petition, Commissioner for Patents”; (B) transmitted by facsimile; (C) hand-carried to the Office of Petitions; or (D) […] The post MPEP Q & A 196: Submission of Petition to Withdraw Application from Issue Under 37 CFR 1.313(c) appeared first on Patent Education Series.

Question: What should a petition for retroactive license include? Answer: A petition for retroactive license shall include: (1) A listing of each of the foreign countries in which the unlicensed patent application material was filed, (2) The dates on which the material was filed in each country, (3) A verified statement (oath or declaration) containing: […] The post MPEP Q & A 195: Necessary Items for a Petition for Retroactive License appeared first on Patent Education Series.

Question: Can a petition under 37 CFR 1.138(c) stop publication of an application? Answer: A petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication. The petition will be granted when it is recognized in […] The post MPEP Q & A 194: Stop the Publication of an Application appeared first on Patent Education Series.

Question: Does the petition to make special apply to patent applications for inventions dealing with energy resources? Answer: The U.S. Patent and Trademark Office will, on petition, accord “special” status to all patent applications for inventions which materially contribute to: (A) the discovery or development of energy resources, or (B) the more efficient utilization and […] The post MPEP Q & A 193: Petition to Make Special and Energy Resources appeared first on Patent Education Series.

Question: How can a provisional obviousness rejection be overcome? Answer: A provisional obviousness rejection can be overcome by: Arguing patentability over the earlier filed application; Combining the subject matter of the copending applications into a single application claiming benefit under 35 U.S.C. 120 of the prior applications and abandoning the copending applications Filing an affidavit […] The post MPEP Q & A 192: Overcome Provisional Obviousness Rejection appeared first on Patent Education Series.

Question: What does the final rule in the “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” state? Answer: In this final rule, the Office revises the rules to provide that a patent claim, or a claim proposed in a motion to amend, shall be […] The post MPEP Q & A 191: Final Rule in the Changes to the Claim Construction Standard appeared first on Patent Education Series.

Question: Have parties to AIA proceedings under Phillips required expanded page limits or otherwise incurred more expenses in their AIA trials than parties in AIA proceedings under BRI? Answer: PTAB has not found that parties to these AIA proceedings under Phillips require expanded page limits or otherwise incur more expense in their AIA trials than […] The post MPEP Q & A 190: AIA Proceeding Expenses Under Phillips appeared first on Patent Education Series.