Patent Bar Mpep Q & A Podcast

Question: The reasons document explains why each item of information does or does not raise a substantial new question of patentability (or SNQ) in a supplemental examination. What should a reasons document include? Answer: The reasons document explains why each item of information does or does not raise a SNQ. The reasons document should include: A statement that the item of information raises a SNQ and identify the claims for which the SNQ is raised; Where appropriate, a statement that the item of information does not raise a SNQ and identify the claims for which a SNQ is not raised;… The post MPEP Q & A 136: What a Reasons Document Should Include appeared first on Patent Education Series.

Question: When may the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) be the international filing date? Answer: The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This… The post MPEP Q & A 135: When May the Prior Art Date of a Reference Under Pre-AIA 35 U.S.C. 102(e) be the International Filing Date? appeared first on Patent Education Series.

Question: Who is barred from filing a request for ex parte reexamination of a patent? Answer: “Any person” may file a request for ex parte reexamination of a patent, unless prohibited by AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). Accordingly, there are no types of “persons” who are excluded from being able to seek reexamination. Corporations and/or governmental entities are included within the scope of the term “any person.” The only “person” who is barred from filing a request for ex parte reexamination of a patent is one who is barred from doing so by the estoppel provisions of AIA 35 U.S.C. 315(e)(1)… The post MPEP Q & A 134: Who is Barred From Filing a Request for Ex Parte Reexamination of a Patent? appeared first on Patent Education Series.

Question: Name two types of correspondence that may be transmitted by facsimile. Answer: Types of correspondence which may be transmitted by facsimile include: CPAs (available for design applications only), amendments, declarations, petitions, information disclosure statements (IDS), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examination (RCEs), assignment documents, issue fee transmittals and authorizations to charge deposit accounts. Chapter Details: The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and handling of mail and papers. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to… The post MPEP Q & A 133: Correspondence That May be Transmitted by Facsimile. appeared first on Patent Education Series.

Question: What are the three separate and distinct requirements of the first paragraph of 35 U.S.C. 112? Answer: 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph require that the specification include the following three separate and distinct requirements: A written description of the invention; The manner and process of making and using the invention (the enablement requirement); and The best mode contemplated by the inventor of carrying out his invention. 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… The post MPEP Q & A 132: What are the Three Separate and Distinct Requirements of the First Paragraph of 35 U.S.C. 112? appeared first on Patent Education Series.

Question: What does an applicant who uses the Patent Cooperation Treaty gain the benefit of? Answer: An applicant who uses the Patent Cooperation Treaty gains the benefit of: (A) a delay in the time when papers must be submitted to the national offices; (B) an international search (to judge the level of the relevant prior art) and a written opinion on the question of whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable before having to expend resources for filing fees, translations and other costs; (C) a delay… The post MPEP Q & A 131: What Does an Applicant Who Uses the Patent Cooperation Treaty Gain the Benefit of? appeared first on Patent Education Series.

Question: What is a covered business method patent according to the AIA? Answer: The AIA specifies that a covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions. 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 recording… The post MPEP Q & A 130: What is a Covered Business Method Patent According to the AIA? appeared first on Patent Education Series.

Question: How can applicants rebut a prima facie case of obviousness based on overlapping ranges? Answer: Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. In addition, an applicant can rebut a presumption of obviousness based on a claimed invention that falls within a prior art range by showing “(1) [t]hat the prior art taught away from the claimed invention…or (2) that there are new and unexpected results relative to the prior art. Chapter Details: The answer to this question can be found in chapter 2100 of the… The post MPEP Q & A 129: How Applicants Can Rebut a Prima Facie Case of Obviousness Based on Overlapping Ranges? appeared first on Patent Education Series.

Question: Who must sign the power of attorney for applications filed on or after September 16, 2012? Answer: For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings). An assignee who is not an applicant cannot revoke or appoint power of attorney in a patent application. “Applicant” refers to the inventor or all of the joint inventors or to the person applying for a patent. If a person is applying for a patent, that person (which… The post MPEP Q & A 128: Individuals Who May Sign the Power of Attorney for Applications Filed On or After September 16, 2012 appeared first on Patent Education Series.

Question: What must a statement under 37 CFR 1.97(e) state? Answer: A statement under 37 CFR 1.97(e) must state either: That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement, or That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry,… The post MPEP Q & A 127: What Must a Statement Under 37 CFR 1.97(e) State? appeared first on Patent Education Series.

Question: When must a third party submission be made? Answer: A third-party submission must be filed prior to the earlier of: The date a notice of allowance is given or mailed in the application; or The later of: (i) Six months after the date on which the application is first published by the Office, or (ii) The date the first rejection under 37 CFR 1.104 of any claim by the examiner is given or mailed during the examination of the application. Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers… The post MPEP Q & A 126: Time When a Third Party Submission Must be Made appeared first on Patent Education Series.

Question: 35 U.S.C. 322 covers petitions involved in post-grant reviews. 35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered. List two reasons why a petition filed under 35 U.S.C. 321 may be considered. Answer: 35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered only if: (1) The petition is accompanied by payment of the fee established by the Director under 35 U.S.C. 321; (2) The petition identifies all real parties in interest; (3) The petition identifies, in writing and with particularity, each claim challenged, the grounds on which… The post MPEP Q & A 125: Reasons Why a Petition Filed Under 35 U.S.C. 321 May be Considered appeared first on Patent Education Series.

Question: In what two situations is the examiner not responsible for examining the sufficiency of the showing? Answer: The examiner is not responsible for examining the sufficiency of the showing except when: The application claim is subject to a rejection under 35 U.S.C. 102(a) or (e) and the applicant files an interference suggestion instead of attempting to overcome the rejection. In this case the examiner must decide if the applicant’s showing is sufficient to overcome the rejection. If the examiner finds the showing not sufficient, then the rejection under 102(a) or (e) still holds true and the examination of the… The post MPEP Q & A 124: Situations Where the Examiner is Not Responsible for Examining the Sufficiency of the Showing appeared first on Patent Education Series.

Question: A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in what situations? Answer: A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in the following situations: To correct inventorship. A correction for failure to claim priority. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of patents. The answer is from the 9th Edition, Revision 07.2015. Depending on… The post MPEP Q & A 123: What Situation May a Certificate of Correction be Used In Order to Correct an Issued Patent as Long as the Filing Was Made Without Deceptive Intent? appeared first on Patent Education Series.

Question: List an advantage of filing a CPA compared to a continuation or divisional application. Answer: The following list includes advantages of filing a CPA compared to a continuation or divisional application: The papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b). In addition, the Office will not normally issue a new filing receipt for a CPA. The time delay between the filing date and the first Office action should be less for a CPA than for an application filed… The post MPEP Q & A 122: Advantages of Filing a CPA Compared to a Continuation or Divisional Application appeared first on Patent Education Series.

Question: List 2 times when a request for continuing examination may be proper. Answer: A request for continued examination may be proper when: An Office action is a final rejection. A Notice of Allowance has issued. An Office action under Ex Parte Quayle (this is a legal proceeding, the details of which are not discussed in the MPEP) has occurred. An application is under appeal by the Board of Appeals and Interferences. 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… The post MPEP Q & A 121: Times When a Request for Continuing Examination May be Proper appeared first on Patent Education Series.

Question: What may an applicant do in response to a rejection based on failure to claim patent-eligible subject matter? Answer: In response to a rejection based on failure to claim patent-eligible subject matter, applicant may: Amend the claim, e.g., to add additional elements or modify existing elements so that the claim as a whole amounts to significantly more than the judicial exception, and/or Present persuasive arguments or evidence based on a good faith belief as to why the rejection is in error. When evaluating a response, examiners must carefully consider all of applicant’s arguments and evidence rebutting the subject matter… The post MPEP Q & A 120: What May an Applicant do in Response to a Rejection Based on Failure to Claim Patent-Eligible Subject Matter? appeared first on Patent Education Series.

Question: When is a reference analogous art to the claimed invention? Answer: A reference is analogous art to the claimed invention if: The reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or The reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). 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… The post MPEP Q & A 119: When is a Reference Analogous Art to the Claimed Invention? appeared first on Patent Education Series.

Question: What must an appellant file if he or she wishes to reinstate an appeal after prosecution is reopened? Answer: If an appellant wishes to reinstate an appeal after prosecution is reopened, appellant must file a new notice of appeal and a complete new appeal brief. Chapter Details: The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeal. 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… The post MPEP Q & A 118: Item an Appellant Must File If He or She Wishes to Reinstate an Appeal After Prosecution is Reopened appeared first on Patent Education Series.

Question: An error in a recorded assignment document will be corrected by the Assignment Division provided a “corrective document” is submitted. What items must the “corrective document” include? Answer: The “corrective document” must include the following items: A copy of the original assignment document with the corrections made therein. The corrections must be initialed and dated by the party conveying the interest; and A new Recordation Form Cover Sheet Chapter Details: The answer to this question can be found in chapter 300 of the MPEP. This chapter covers Ownership and Assignment. The answer is from the 9th Edition, Revision 07.2015.… The post MPEP Q & A 117: Items a ‘Corrective Document’ Must Include? appeared first on Patent Education Series.