Patent Bar Mpep Q & A Podcast

Question: What is the definition of fundamental economic practices? Answer: The courts have used the phrases “fundamental economic practices” or “fundamental economic concepts” to describe concepts relating to the economy and commerce, such as agreements between people in the form of contracts, legal obligations, and business relations. 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:… The post MPEP Q & A 156: What is the Definition of Fundamental Economic Practices? appeared first on Patent Education Series.

Question: List two statutes that grounds for post-grant review may be raised for. Answer: Grounds for post-grant review include grounds that could be raised under 35 U.S.C. 102 or 103 including those based on prior art consisting of patents or printed publications. Other grounds available for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement. Chapter Details: The answer to this question can be found in the following supplement: Inter Partes, Post Grant, and Covered Business Method Review Final Rules. This is a special supplement that at the time of this… The post MPEP Q & A 155: Statutes That Grounds for Post-Grant Review May be Raised For appeared first on Patent Education Series.

Question: What does the broadest reasonable interpretation (BRI) do? Answer: The BRI sets the boundaries of the coverage sought by the claim and will influence whether the claim seeks to cover subject matter that is beyond the four statutory categories or encompasses subject matter that falls within the exceptions. 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.… The post MPEP Q & A 154: What Does the Broadest Reasonable Interpretation (BRI) Do? appeared first on Patent Education Series.

Question: When will a practitioner be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct? Answer: A practitioner shall be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct if: The practitioner orders or, with knowledge of the specific conduct, ratifies the conduct involved; or The practitioner is a partner or has comparable managerial authority in the law firm in which the other practitioner practices, or has direct supervisory authority over the other practitioner, and knows of the conduct at a time when its consequences can be avoided or mitigated but fails to take… The post MPEP Q & A 153: When Will a Practitioner be Responsible for Another Practitioner’s Violation of the USPTO Rules of Professional Conduct? appeared first on Patent Education Series.

Question: An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding. List 2 different types of information this may include. Answer: An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding; this information includes: Information used in the inventive process, such as: A copy of non-patent literature, A publication application, or A patent used in the inventive process The publication date of an undated document mentioned by the applicant which may qualify as a prior art… The post MPEP Q & A 152: Information an Attorney of Record May Have to Submit in Reply to an Office Action, Reissue Application, or Reexamination Proceeding appeared first on Patent Education Series.

Question: List two situations where a practitioner may withdraw from representing a client according to 37 C.F.R. 11.116. Answer: A practitioner may withdraw from representing a client if: Withdrawal can be accomplished without material adverse effect on the interests of the client; The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent; The client has used the practitioner’s services to perpetrate a crime or fraud; A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement; The client fails substantially… The post MPEP Q & A 151: Situations Where a Practitioner May Withdraw From Representing a Client According to 37 C.F.R. 11.116 appeared first on Patent Education Series.

Question: When is the on-sale bar of pre-AIA 35 U.S.C. 102(b) triggered? Answer: The on-sale bar of pre-AIA 35 U.S.C. 102(b) is triggered if the invention is both: The subject of a commercial offer for sale not primarily for experimental purposes and Ready for patenting. 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 07.2015. 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… The post MPEP Q & A 150: Triggering of On-Sale Bar of Pre-AIA 35 U.S.C. 102(b) appeared first on Patent Education Series.

Question: What are the 4 categories of invention recited in 35 U.S.C. 101? Answer: The four categories of invention recited in 35 U.S.C. 101 are: process, machine, manufacture, or composition of matter. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of applications. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions. Section Summary: This question and answer comes from section 706 of the MPEP.  The following is a brief… The post MPEP Q & A 149: Four Categories of Invention Recited in 35 U.S.C. 101 appeared first on Patent Education Series.

Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual who is substantively involved on behalf of the patent owner. Chapter Details: The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers Citation of Prior Art and Ex Parte Reexamination of Patents. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may… The post MPEP Q & A 148: The Duty of Disclosure in Reexamination Proceedings appeared first on Patent Education Series.

Question: Can a post-grant review be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent? Answer: No, a post-grant review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent. Chapter Details: The answer to this question can be found in the following supplement: Inter Partes, Post Grant, and Covered… The post MPEP Q & A 147: Post-Grant Reviews and Civil Actions appeared first on Patent Education Series.

Question: When can a combination as claimed show that inventions are distinct? Answer: Inventions are distinct if it can be shown that a combination as claimed: (A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and (B) the subcombination can be shown to have utility either by itself or in another materially different combination. When these factors cannot be shown, such inventions are not distinct. Chapter Details: The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C.… The post MPEP Q & A 146: When Can a Combination as Claimed Show that Inventions are Distinct? appeared first on Patent Education Series.

Question: How can a maintenance fee be paid? Answer: A maintenance fee may be paid: with cash with Treasury notes with national bank notes with post office money orders with certified checks over the internet by electronic funds transfer (EFT), credit card, or deposit account payment methods Chapter Details: The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers Maintenance Fees. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section… The post MPEP Q & A 145: Methods For Paying a Maintenance Fee appeared first on Patent Education Series.

Question: What should a subject matter eligibility rejection under Step 2 do? Answer: A subject matter eligibility rejection under Step 2 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; Identify any additional elements (specifically point to claim features/limitations/steps) recited in the claim beyond the identified judicial exception; and Explain the reason(s) that the additional elements taken individually, and also taken as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception. Chapter… The post MPEP Q & A 144: What Should a Subject Matter Eligibility Rejection Under Step 2 Do? appeared first on Patent Education Series.

Question: Who decides petitions for derivation and conducts any ensuing derivation proceeding? Answer: The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensuing derivation proceeding. Chapter Details: The answer to this question can be found in the following supplement: Derivation Proceeding 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. Section Summary: This question and answer comes from the following supplement: Derivation Proceeding Final… The post MPEP Q & A 143: Who Decides Petitions for Derivation and Conducts Any Ensuing Derivation Proceeding? appeared first on Patent Education Series.

Question: List 2 examples of evidence under 37 C.F.R. 1.131(a). Answer: The allegations of fact might be supported by submitting as evidence one or more of the following: (A) attached sketches; (B) attached blueprints; (C) attached photographs; (D) attached reproductions of notebook entries; (E) an accompanying model; (F) attached supporting statements by witnesses, where verbal disclosures are the evidence relied upon. (G) testimony given in an interference. Where interference testimony is used, the applicant must point out which parts of the testimony are being relied on; examiners cannot be expected to search the entire interference record for the evidence; (H)… The post MPEP Q & A 142: Examples of Evidence Under 37 C.F.R. 1.131(a) appeared first on Patent Education Series.

Question: What are the three major issues that must be completed during the examination before an interference may be called? Answer: The three major issues that must be completed during the examination are: All pending claims must be allowed, finally rejected, or canceled All petitions must be decided All appeals from a final rejection must be completed Chapter Details: The answer to this question can be found in chapter 2300 of the MPEP. This chapter covers Interference Proceedings. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or… The post MPEP Q & A 141: Issues That Must be Completed During the Examination Before an Interference May be Called appeared first on Patent Education Series.

Question: List two status identifiers that are expected to follow the claim number in an amendment to the claims. Answer: Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), or (not entered). The status identifier (withdrawn – currently amended) is also acceptable for a withdrawn claim that is being currently amended. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of applications. The answer is from the 9th Edition, Revision 07.2015. Depending… The post MPEP Q & A 140: Status Identifiers Expected to Follow the Claim Number in an Amendment to the Claims appeared first on Patent Education Series.

Question: What fees might the Office refund? Answer: The Office may refund: A fee paid by mistake (e.g., fee paid when no fee is required); or Any fee paid in excess of the amount of fee that is required. 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 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions. Section Summary: This question and answer comes from… The post MPEP Q & A 139: Fees the Office Might Refund appeared first on Patent Education Series.

Question: When may a process and apparatus for its practice be shown to be distinct inventions? Answer: Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or by hand; or (B) that the apparatus as claimed can be used to practice another materially different process. Chapter Details: The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111;… The post MPEP Q & A 138: When May a Process and Apparatus for its Practice be Shown to be Distinct Inventions? appeared first on Patent Education Series.

Question: Who may a party dissatisfied with a final decision in a derivation proceeding appeal to? Answer: A party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit. Chapter Details: The answer to this question can be found in the following supplement: Derivation Proceeding 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. Section Summary: This question and answer… The post MPEP Q & A 137: Who May a Party Dissatisfied with a Final Decision in a Derivation Proceeding Appeal To? appeared first on Patent Education Series.