Patent Bar Mpep Q & A Podcast

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.

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.