Patent Bar Mpep Q & A Podcast

Question: What are the two final rules dealing with the claim construction standard as implemented in the supplement entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”? Answer: In the first final rule, the Office changed the existing rules to, among other things: Increase […] The post MPEP Q & A 187: Two Final Rules Dealing with Claim Construction Standard appeared first on Patent Education Series.

Question: Name two types of patents that may not use the provisions of 37 C.F.R. 1.114. Answer: The provisions of 37 C.F.R. 1.114 do not apply to the following types of patents: design patent applications provisional applications applications filed before June 8, 1995 international applications filed before June 8, 1995 an international design application reexamination […] The post MPEP Q & A 186: Name Types of Patents that May Not Use 37 C.F.R. 1.114 appeared first on Patent Education Series.

Question: What must an application filed under 37 CFR 1.53(d) be filed before the earliest of? Answer: An application filed under 37 CFR 1.53(d) must be filed before the earliest of: (A) payment of the issue fee on the prior application, unless a petition is granted in the prior application; (B) abandonment of the prior […] The post MPEP Q & A 185: What Must an Application Filed Under 37 CFR 1.53(d) be Filed Before the Earliest Of? appeared first on Patent Education Series.

Question: A subject matter eligibility rejection under Step 2 should provide an explanation for each part of the Step 2 analysis; Step 2A and Step 2B. What specifically should a rejection identify under Step 2A? Answer: For Step 2A, the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception. For example, if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that… The post MPEP Q & A 184: What Should a Subject Matter Eligibility Rejection Identify Under Step 2A? appeared first on Patent Education Series.

Question: When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” apply? Answer: As shown in the supplement … The changes to the claim construction standard will apply to proceedings where a petition is filed on or after the effective date of the final rule (November 13, 2018). The Office will apply the federal court claim construction standard, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C.… The post MPEP Q & A 183: When Changes to the Claim Construction Standard Apply appeared first on Patent Education Series.

Question: List one of the basic characteristics of ex parte reexamination. Answer: The basic characteristics of ex parte reexamination are as follows: Anyone can request reexamination at any time during the period of enforceability of the patent; In ex parte reexaminations, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103. Patents may also be applied in a double patenting rejection; A substantial new question of patentability must be present for reexamination to be ordered; If ordered, the actual reexamination proceeding is ex parte in… The post MPEP Q & A 182: Characteristics of Ex Parte Reexamination appeared first on Patent Education Series.

Question: What is the executive summary of the final rule when dealing with the claim construction standard that took effect on November 13, 2018? Answer: This final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-Smith America Invents Act (‘‘AIA’’) providing for trials before the Office, by replacing the BRI (broadest reasonable interpretation) standard for interpreting unexpired patent claims and substitute claims proposed in a motion to amend with the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b). The rule adopts… The post MPEP Q & A 181: Summary of Claim Construction Standard appeared first on Patent Education Series.

Question: What does AIA 35 U.S.C. 102(b) discuss? Answer: AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(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 08.2017. 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 2152 of the MPEP.  The following is a brief summary of section 2152. 2152  Detailed… The post MPEP Q & A 180: AIA 35 U.S.C. 102(b) appeared first on Patent Education Series.

Question: What is the 3-step test for recapture? Answer: The three-step test for recapture is: First, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; Next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and Finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP.… The post MPEP Q & A 179: What is the 3-Step Test for Recapture? appeared first on Patent Education Series.

Question: What is the difference between derivation and priority of invention? Answer: Derivation and priority of invention both focus on inventorship.  Derivation addresses originality, i.e., who invented the subject matter, whereas priority focuses on which party invented the subject matter first. 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 08.2017. 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… The post MPEP Q & A 178: What is the Difference Between Derivation and Priority of Invention? appeared first on Patent Education Series.

Question: Can a patent practitioner ever reveal information relating to the representation of a client when the client has not given informed consent? Answer: Yes, a practitioner may reveal information relating to the representation of a client to the extent the practitioner reasonably believes necessary: (1) To prevent reasonably certain death or substantial bodily harm; (2) To prevent the client from engaging in inequitable conduct before the Office or from committing a crime or fraud that is reasonably certain to result in substantial injury to the financial interests or property of another and in furtherance of which the client has… The post MPEP Q & A 177: Revealing Information Relating to the Representation of a Client When the Client has Not Given Informed Consent appeared first on Patent Education Series.

Question: What does a petition under 37 C.F.R. 1.78 require? Answer: A petition under 37 CFR 1.78(b) requires: the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); the petition fee; and a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period was unintentional. Chapter Details: The answer to this question can be found in chapter 200 of the MPEP. This chapter covers types and status of… The post MPEP Q & A 176: What Does a Petition Under 37 C.F.R. 1.78 Require? appeared first on Patent Education Series.

Question: List a concept related to tracking or organizing information. Answer: Examples of concepts related to tracking or organizing information include; i. classifying and storing digital images in an organized manner ii. collecting information, analyzing it, and displaying certain results of the collection and analysis iii. encoding and decoding image data – RecogniCorp, LLC v. Nintendo Co; iv. organizing information through mathematical correlations v. receiving, screening, and distributing email 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 08.2017. Depending on future… The post MPEP Q & A 175: Concepts Related to Tracking or Organizing Information appeared first on Patent Education Series.

Question: List 2 submission types that may not be filed via EFS Web. Answer: The following is a list of submission types that are not permitted to be filed using EFS-Web: Plant patent applications and follow-on documents associated with plant patent applications, other than third party preissuance submissions. Requests for Reexamination for plant patents and documents associated with reexamination proceedings for plant patents. Requests for inter partes review. Any third party inquiries, petitions or papers unless specifically authorized by the EFS-Web Legal Framework (e.g., citation of prior art and written statements in patent files) and/or provided for via dedicated EFS-Web interface (e.g.,… The post MPEP Q & A 174: Submission Types that May Not be Filed Via EFS Web. appeared first on Patent Education Series.

Question: What is a complete nonprovisional application comprised of? Answer: A complete nonprovisional application comprises the following: a specification, including claims, drawings, an oath or declaration, the prescribed filing fee, search fee, examination fee and application size fee 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 08.2017. 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 173: What is a Complete Nonprovisional Application Comprised of? appeared first on Patent Education Series.

Question: Name two fees that must be paid upon filing a request for prioritized examination. Answer: Upon filing the request for prioritized examination, the following fees must be paid for the application: (1) the prioritized examination fee set forth in 37 CFR 1.17(c), (2) the processing fee set forth in 37 CFR 1.17(i)(1), (3) the publication fee set forth in 37 CFR 1.18(d), (4) the basic filing fee set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c), (5) the search fee set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m),… The post MPEP Q & A 172: Fees that Must be Paid Upon Filing a Request for Prioritized Examination appeared first on Patent Education Series.

Question: When the publication or issue date is later than the current date (i.e., the date of the request), who will that information be given to? Answer: When the publication or issue date is later than the current date (i.e., the date of the request), such information may be given only to the applicant, an inventor, the assignee of record, or the attorney or agent of record. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers secrecy, access, national security, and foreign filing. The answer is from the 9th Edition,… The post MPEP Q & A 171: Instances Where Publication or Issue Date is Later Than the Current Date appeared first on Patent Education Series.

Question: Must a claim be identified to a correct category of subject matter? Answer: It is not necessary to identify a single category into which a claim falls, so long as it is clear that the claim falls into at least one category. It is also not necessary to identify a “correct” category into which the claim falls, because although in many instances it is clear within which category a claimed invention falls, a claim may satisfy the requirements of more than one category. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP.… The post MPEP Q & A 170: Must a Claim be Identified to a Correct Category of Subject Matter? appeared first on Patent Education Series.

Question: Provide an example of a non-limiting claim that is not directed to any of the statutory categories. Answer: Examples of a non-limiting claim that is 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;… The post MPEP Q & A 169: Non-Limiting Claims Not Directed to Any of the Statutory Categories. appeared first on Patent Education Series.

Question: A practitioner shall provide competent representation to a client. What does competent representation to a client entail? Answer: Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation. Chapter Details: The answer to this question can be found in the following supplement: Changes to Representation of Others Before the USPTO Final Rules. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.… The post MPEP Q & A 168: Competent Representation to a Client appeared first on Patent Education Series.