Shows
Patent Bar MPEP Q & A PodcastMPEP Q & A 321: What are the factual inquiries related to obviousness?Question: What are the factual inquiries related to obviousness that the Court enunciates? Answer: Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows: (A) Determining the scope and content of the prior art; (B) Ascertaining the differences between the claimed invention and the […]
The post MPEP Q & A 321: What are the factual inquiries related to obviousness? appeared first on Patent Education Series.
2025-02-1103 minPatent Bar MPEP Q & A PodcastMPEP Q & A 320: What are the three types of designs interpreted by case law to include?Question: What are the three types of designs the language “new, original and ornamental design for an article of manufacture” has been interpreted by the case law to include? Answer: The language “new, original and ornamental design for an article of manufacture” has been interpreted by the case law to include at least three kinds of designs: […]
The post MPEP Q & A 320: What are the three types of designs interpreted by case law to include? appeared first on Patent Education Series.
2025-01-2802 minPatent Bar MPEP Q & A PodcastMPEP Q & A 319: What must any assignment-related document for patent matters submitted by facsimile include?Question: What three items must any assignment-related document for patent matters submitted by facsimile include? Answer: Any assignment-related document for patent matters submitted by facsimile must include: (A) an identified application or patent number; (B) one cover sheet to record a single transaction; and (C) payment of the recordation fee by a credit card, is […]
The post MPEP Q & A 319: What must any assignment-related document for patent matters submitted by facsimile include? appeared first on Patent Education Series.
2025-01-1402 minPatent Bar MPEP Q & A PodcastMPEP Q & A 318: Requirements of an oath or declaration under section 37 CFR 1.63.Question: Name two requirements of an oath or declaration under section 37 CFR 1.63? Answer: An oath or declaration under section 37 CFR 1.63 must: (1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name; (2) Identify the application to which it is directed; (3) Include a […]
The post MPEP Q & A 318: Requirements of an oath or declaration under section 37 CFR 1.63. appeared first on Patent Education Series.
2024-12-3102 minPatent Bar MPEP Q & A PodcastMPEP Q & A 317: How can you determine whether the original patent requirement is satisfied in a reissue application?Question: How can you determine whether the original patent requirement is satisfied in a reissue application? Answer: Examiners should review the reissue application to determine whether the original patent requirement is satisfied, by considering if: (A) the claims presented in the reissue application are described in the original patent specification and enabled by the original […]
The post MPEP Q & A 317: How can you determine whether the original patent requirement is satisfied in a reissue application? appeared first on Patent Education Series.
2024-12-1703 minPatent Bar MPEP Q & A PodcastMPEP Q & A 316: Is it ever necessary to change the inventorship named in the application?Question: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, is it ever necessary to change the inventorship named in the application? Answer: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, it may become necessary to […]
The post MPEP Q & A 316: Is it ever necessary to change the inventorship named in the application? appeared first on Patent Education Series.
2024-12-0303 minPatent Bar MPEP Q & A PodcastMPEP Q & A 315: List examples of situations that confirm a “real world” context of use.Question: List two examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use and, therefore, do not define “substantial utilities.” Answer: The following are examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” […]
The post MPEP Q & A 315: List examples of situations that confirm a “real world” context of use. appeared first on Patent Education Series.
2024-11-1903 minPatent Bar MPEP Q & A PodcastMPEP Q & A 314: What will the request indicate for each patent and printed publication cited in the request?Question: When an examiner concludes that no substantial new question of patentability has been raised, they will prepare a decision denying the reexamination request. What will that request indicate for each patent and printed publication cited in the request? Answer: If the examiner concludes that no substantial new question of patentability has been raised, the […]
The post MPEP Q & A 314: What will the request indicate for each patent and printed publication cited in the request? appeared first on Patent Education Series.
2024-11-0503 minPatent Bar MPEP Q & A PodcastMPEP Q & A 313: Reasons why the Office will withdraw the application from issue.Question: Once the issue fee has been paid, list two reasons why the Office will withdraw the application from issue at its own initiative. Answer: Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except: (1) A mistake on the part […]
The post MPEP Q & A 313: Reasons why the Office will withdraw the application from issue. appeared first on Patent Education Series.
2024-10-2202 minPatent Bar MPEP Q & A PodcastMPEP Q & A 312: List two General Plastic non-exclusive factors.Question: List two General Plastic non-exclusive factors. Answer: The General Plastic non-exclusive factors include the following: Whether the same petitioner previously filed a petition directed to the same claims of the same patent; Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition […]
The post MPEP Q & A 312: List two General Plastic non-exclusive factors. appeared first on Patent Education Series.
2024-10-0803 minPatent Bar MPEP Q & A PodcastMPEP Q & A 311: Two requirements for a petition for suspension of action under 37 CFR 1.103(a)Question: List two requirements for a petition for suspension of action under 37 CFR 1.103(a). Answer: A petition for suspension of action under 37 CFR 1.103(a) must: (A) be presented as a separate paper; (B) be accompanied by the petition fee set forth in 37 CFR 1.17(g); (C) request a specific and reasonable period of suspension not greater than […]
The post MPEP Q & A 311: Two requirements for a petition for suspension of action under 37 CFR 1.103(a) appeared first on Patent Education Series.
2024-09-2403 minPatent Bar MPEP Q & A PodcastMPEP Q & A 310: List two examples of notices issued as part of the pre-examination processing of an applicationQuestion: The three-month period in 37 CFR 1.704(b) applies to the Office notices and letters issued as part of the pre-examination processing of an application (except a Notice of Omitted Items in a Nonprovisional Application as discussed above). List two examples of these notices. Answer: These notices include: A Notice of Incomplete Nonprovisional Application (except as to […]
The post MPEP Q & A 310: List two examples of notices issued as part of the pre-examination processing of an application appeared first on Patent Education Series.
2024-09-1003 minPatent Bar MPEP Q & A PodcastMPEP Q & A 309: List two requirements for adding a “Sequence Listing” after the application filing date?Question: List two requirements for adding a “Sequence Listing” after the application filing date? Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text file submitted via the USPTO patent electronic […]
The post MPEP Q & A 309: List two requirements for adding a “Sequence Listing” after the application filing date? appeared first on Patent Education Series.
2024-08-2703 minPatent Bar MPEP Q & A PodcastMPEP Q & A 308: What type of arguments should a patent owner preliminary response include?Question: What type of arguments should a patent owner preliminary response include? Answer: A patent owner preliminary response may include one or more of the following arguments: The petitioner is statutorily barred from pursuing a review; The references asserted to establish that the claims are unpatentable are not in fact printed publications; The prior art […]
The post MPEP Q & A 308: What type of arguments should a patent owner preliminary response include? appeared first on Patent Education Series.
2024-08-1303 minPatent Bar MPEP Q & A PodcastMPEP Q & A 307: When are electronic means or medium for filing IDSs permitted?Question: When are electronic means or medium for filing IDSs permitted? Answer: As shown in chapter 600 … Electronic means or medium for filing IDSs are not permitted except for: IDSs electronically submitted using the USPTO patent electronic filing system; or copies of large tables, computer program listings, and sequence listings submitted as a PDF […]
The post MPEP Q & A 307: When are electronic means or medium for filing IDSs permitted? appeared first on Patent Education Series.
2024-07-3002 minPatent Bar MPEP Q & A PodcastMPEP Q & A 306: Sealed confidential information prior to the institution of the trial by which options?Question: Where a petitioner files a motion to seal with the petition that seeks entry of a protective order other than the default protective order, a patent owner may only access the sealed confidential information prior to the institution of the trial by which options? Answer: Where a petitioner files a motion to seal with […]
The post MPEP Q & A 306: Sealed confidential information prior to the institution of the trial by which options? appeared first on Patent Education Series.
2024-07-1603 minPatent Bar MPEP Q & A PodcastMPEP Q & A 305: What must the supplemental search fee be accompanied by in addition to the payment?Question: What must the supplemental search fee be accompanied by in addition to the payment? Answer: As shown in chapter 1800 … The supplemental search fee must be paid and be accompanied by: a protest and a request for refund of the supplemental search fee. Chapter Details: The answer to this question can be found […]
The post MPEP Q & A 305: What must the supplemental search fee be accompanied by in addition to the payment? appeared first on Patent Education Series.
2024-07-0202 minPatent Bar MPEP Q & A PodcastMPEP Q & A 304: What does routine discovery include?Question: What does routine discovery include? Answer: Routine discovery includes: Production of any exhibit cited in a paper or testimony; The cross-examination of the other sides declarants; and Relevant information that is inconsistent with a position advanced during the proceeding. Routine discovery places the parties on a level playing field and streamlines the proceeding. Board […]
The post MPEP Q & A 304: What does routine discovery include? appeared first on Patent Education Series.
2024-06-1803 minPatent Bar MPEP Q & A PodcastMPEP Q & A 303: What should a certificate of correction filed via the patent electronic filing system use as the document description?Question: What should a request for a certificate of correction filed via the patent electronic filing system use as the document description? Answer: “A request for a certificate of correction filed via the patent electronic filing system should use the document description: Request for Certificate of Correction.” Chapter Details: The answer to this question can […]
The post MPEP Q & A 303: What should a certificate of correction filed via the patent electronic filing system use as the document description? appeared first on Patent Education Series.
2024-06-0402 minPatent Bar MPEP Q & A PodcastMPEP Q & A 302: Major differences between 35 U.S.C. 102(c) and the CREATE ActQuestion: What are the major differences between 35 U.S.C. 102(c) and the CREATE Act? Answer: The major differences between 35 U.S.C. 102(c) and the CREATE Act are the following: 35 U.S.C. 102(c)is keyed to the effective filing date of the claimed invention, while the CREATE Act (pre-AIA 35 U.S.C. 103(c)) focuses on the date that the claimed invention […]
The post MPEP Q & A 302: Major differences between 35 U.S.C. 102(c) and the CREATE Act appeared first on Patent Education Series.
2024-05-2103 minPatent Bar MPEP Q & A PodcastMPEP Q & A 301: What does the prohibition on ex parte communications not extend to?Question: All substantive communications with the Board regarding a proceeding must include all parties to the proceeding, except as otherwise authorized. What does the prohibition on ex parte communications not extend to? Answer: All substantive communications with the Board regarding a proceeding must include all parties to the proceeding, except as otherwise authorized. The prohibition […]
The post MPEP Q & A 301: What does the prohibition on ex parte communications not extend to? appeared first on Patent Education Series.
2024-05-0703 minPatent Bar MPEP Q & A PodcastMPEP Q & A 300: Difference between sequence listing requirements filed before or after July 1, 2022Question: What is the difference between sequence listing requirements filed before or after July 1, 2022? Answer: For applications filed before July 1, 2022, the sequence listing can be a “Sequence Listing” (as an ACSII plain text file in compliance with 37 CFR 1.821-1.824) submission must be submitted via the USPTO patent electronic filing system […]
The post MPEP Q & A 300: Difference between sequence listing requirements filed before or after July 1, 2022 appeared first on Patent Education Series.
2024-04-2303 minPatent Bar MPEP Q & A PodcastMPEP Q & A 299: What should a motion to exclude evidence include?Question: What should a motion to exclude evidence include? Answer: A motion to exclude evidence should: (a) Identify where in the record the objection originally was made; (b) Identify where in the record the evidence sought to be excluded was relied upon by an opponent; (c) Address objections to exhibits in numerical order; and (d) […]
The post MPEP Q & A 299: What should a motion to exclude evidence include? appeared first on Patent Education Series.
2024-04-0903 minPatent Bar MPEP Q & A PodcastMPEP Q & A 298: Submission requirements for “Sequence Listing XML”Question: A “Sequence Listing XML” may be submitted as a XML file with a “.xml” extension via the USPTO patent electronic filing system or as read-only optical discs. What does such a submission require? Answer: Such submission requires that applicant provide a statement in a separate paragraph that incorporates by reference the material in the […]
The post MPEP Q & A 298: Submission requirements for “Sequence Listing XML” appeared first on Patent Education Series.
2024-03-2603 minPatent Bar MPEP Q & A PodcastMPEP Q & A 297: List two situations where a certificate of correction may not be appropriate.Question: List two exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate. Answer: Exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate: (A) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 in a patent that was examined (as […]
The post MPEP Q & A 297: List two situations where a certificate of correction may not be appropriate. appeared first on Patent Education Series.
2024-03-1203 minPatent Bar MPEP Q & A PodcastMPEP Q & A 296: List the criteria for “Large Tables”Question: List the criteria for “Large Tables” that may be submitted in electronic form in ASCII plain text. Answer: “Large Tables” that may be submitted in electronic form in ASCII plain text are: any individual table that is more than 50 pages in length, or multiple tables, if the total number of pages of all […]
The post MPEP Q & A 296: List the criteria for “Large Tables” appeared first on Patent Education Series.
2024-02-2702 minPatent Bar MPEP Q & A PodcastMPEP Q & A 295: Which of the new trial proceedings can the patent owner file a preliminary response for?Question: Which of the following new trial proceedings can the patent owner file a preliminary response for? Answer: The patent owner is afforded an opportunity to file a preliminary response for inter partes review (IPR), postgrant review (PGR), and covered business method patents (CBM). Chapter Details: This question comes from the following supplement “Patent Trial […]
The post MPEP Q & A 295: Which of the new trial proceedings can the patent owner file a preliminary response for? appeared first on Patent Education Series.
2024-02-1302 minPatent Bar MPEP Q & A PodcastMPEP Q & A 294: What are the two aspects every requirement to restrict has?Question: What are the two aspects every requirement to restrict has? Answer: Every requirement to restrict has two aspects: the reasons (as distinguished from the mere statement of conclusion) why each invention as claimedis either independent or distinct from the other(s); and the reasons why there would be a serious search and/or examination burden on […]
The post MPEP Q & A 294: What are the two aspects every requirement to restrict has? appeared first on Patent Education Series.
2024-01-3002 minPatent Bar MPEP Q & A PodcastMPEP Q & A 293: Who conducts derivation proceedings, inter partes reviews, and post-grant reviews?Question: Who conducts derivation proceedings, inter partes reviews, and post-grant reviews? Answer: The Board is to conduct derivation proceedings, inter partes reviews, and post-grant reviews. Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of […]
The post MPEP Q & A 293: Who conducts derivation proceedings, inter partes reviews, and post-grant reviews? appeared first on Patent Education Series.
2024-01-1602 minPatent Bar MPEP Q & A PodcastMPEP Q & A 292: Two changes the Hague Agreement Article 16(1) providesQuestion: List two changes the Hague Agreement Article 16(1) provides for in the International Register by the International Bureau. Answer: Hague Agreement Article 16(1) provides for the recording of certain changes in the International Register by the International Bureau, including: a change in ownership of the international registration; a change in the name or address […]
The post MPEP Q & A 292: Two changes the Hague Agreement Article 16(1) provides appeared first on Patent Education Series.
2024-01-0203 minPatent Bar MPEP Q & A PodcastMPEP Q & A 291: When did the derivation rules go into effect?Question: When did the derivation rules go into effect? Answer: The derivation rules went into effect 18 months after AIA enactment (March 16, 2013). Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this […]
The post MPEP Q & A 291: When did the derivation rules go into effect? appeared first on Patent Education Series.
2023-12-1902 minPatent Bar MPEP Q & A PodcastMPEP Q & A 290: Use of metric system of measurements in patent applicationsQuestion: How should measurements be given within a patent application? Answer: In order to minimize the necessity in the future for converting dimensions given in the English system of measurements to the metric system of measurements when using printed patents as research and prior art search documents, all patent applicants should use the metric (S.I.) […]
The post MPEP Q & A 290: Use of metric system of measurements in patent applications appeared first on Patent Education Series.
2023-12-0503 minPatent Bar MPEP Q & A PodcastMPEP Q & A 289: List two situations that are not considered new grounds of rejection?Question: List two situations that are not considered new grounds of rejection? Answer: Where the statutory basis for the rejection remains the same, and the evidence relied upon in support of the rejection remains the same, a change in the discussion of, or rationale in support of, the rejection does not necessarily constitute a new […]
The post MPEP Q & A 289: List two situations that are not considered new grounds of rejection? appeared first on Patent Education Series.
2023-11-2103 minPatent Bar MPEP Q & A PodcastMPEP Q & A 288: How may an examiner treat an amendment not fully responsive to a non-final Office action?Question: How may an examiner treat an amendment not fully responsive to a non-final Office action? Answer: An examiner may treat an amendment not fully responsive to a non-final Office action by: (A) accepting the amendment as an adequate reply to the non-final Office action to avoid abandonment under 35 U.S.C. 133 and 37 CFR1.135; […]
The post MPEP Q & A 288: How may an examiner treat an amendment not fully responsive to a non-final Office action? appeared first on Patent Education Series.
2023-11-0703 minPatent Bar MPEP Q & A PodcastMPEP Q & A 287: When inconsistent information is given for an application data sheet, what submission will govern control?Question: When inconsistent information is given for an application data sheet, what submission will govern control according to 37 CFR 1.76(d)(1)? Answer: 37 CFR 1.76(d)(1) provides that the most recent submission will govern (control) with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or […]
The post MPEP Q & A 287: When inconsistent information is given for an application data sheet, what submission will govern control? appeared first on Patent Education Series.
2023-10-2403 minPatent Bar MPEP Q & A PodcastMPEP Q & A 286: What are the factual inquiries of obviousness enunciated by the Court?Question: What are the factual inquiries of obviousness enunciated by the Court? Answer: Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows: (A) Determining the scope and content of the prior art; (B) Ascertaining the differences between the claimed invention and the prior […]
The post MPEP Q & A 286: What are the factual inquiries of obviousness enunciated by the Court? appeared first on Patent Education Series.
2023-10-1004 minPatent Bar MPEP Q & A PodcastMPEP Q & A 285: What don’t the provisions of 37 CFR 1.114 apply to?Question: What do the provisions of 37 CFR 1.114, request for continued examination, not apply to? Answer: The provisions of 27 CFR 1.114, Request for continued examination, do not apply to: (1) A provisional application; (2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995; (3) An […]
The post MPEP Q & A 285: What don’t the provisions of 37 CFR 1.114 apply to? appeared first on Patent Education Series.
2023-09-2603 minPatent Bar MPEP Q & A PodcastMPEP Q & A 284: When will a provisional application be given a filing date?Question: When will a provisional application be given a filing date? Answer: A provisional application filed on or after December 18, 2013 will be given a filing date as of the date a specification, with or without claims, is received in the Office. Chapter Details: The answer to this question can be found in chapter […]
The post MPEP Q & A 284: When will a provisional application be given a filing date? appeared first on Patent Education Series.
2023-09-1202 minPatent Bar MPEP Q & A PodcastMPEP Q & A 283: List of special casesQuestion: List at least 3 special cases (those which are advanced out of turn for examination). Answer: The following is a list of special cases (those which are advanced out of turn for examination): (A) Applications on inventions that are deemed of peculiar importance to some branch of the public service and when for that […]
The post MPEP Q & A 283: List of special cases appeared first on Patent Education Series.
2023-08-2904 minPatent Bar MPEP Q & A PodcastMPEP Q & A 282: Continued prosecution application practice for utility and plant applicationsQuestion: Since CPA applications were eliminated for utility and plant applications, what should applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed consider filing? Answer: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. […]
The post MPEP Q & A 282: Continued prosecution application practice for utility and plant applications appeared first on Patent Education Series.
2023-08-1504 minPatent Bar MPEP Q & A PodcastMPEP Q & A 281: Time for reply to final rejectionQuestion: What is the time for reply to a final rejection? Answer: The time for reply to a final rejection is as follows: (A) All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain a form paragraph advising applicant that if the first reply is filed within 2 months of the […]
The post MPEP Q & A 281: Time for reply to final rejection appeared first on Patent Education Series.
2023-08-0104 minPatent Bar MPEP Q & A PodcastMPEP Q & A 280: When does the revocation of a filing receipt license become effective?Question: When does the revocation of a filing receipt license become effective? Answer: The revocation becomes effective on the date on which the notice is mailed. 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 […]
The post MPEP Q & A 280: When does the revocation of a filing receipt license become effective? appeared first on Patent Education Series.
2023-07-1802 minPatent Bar MPEP Q & A PodcastMPEP Q & A 279: Methods of paying a maintenance fee and necessary surchargesQuestion: How can a maintenance fee and any necessary surcharge be made? Answer: The method of payment for the maintenance fee and any necessary surcharge shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order as provided […]
The post MPEP Q & A 279: Methods of paying a maintenance fee and necessary surcharges appeared first on Patent Education Series.
2023-07-0403 minPatent Bar MPEP Q & A PodcastMPEP Q & A 278: Claiming the benefit of a provisional applicationQuestion: What does a petition under 37 CFR 1.78(b) require? Answer: A petition under 37 CFR 1.78(b) requires: (A) 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); (B) the petition fee as […]
The post MPEP Q & A 278: Claiming the benefit of a provisional application appeared first on Patent Education Series.
2023-06-2003 minPatent Bar MPEP Q & A PodcastMPEP Q & A 277: Exceptions to extensions of timeQuestion: 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee up to 5 months after the end of the time period set to take action except during which circumstances? Answer: 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee […]
The post MPEP Q & A 277: Exceptions to extensions of time appeared first on Patent Education Series.
2023-06-0603 minPatent Bar MPEP Q & A PodcastMPEP Q & A 276: Examples of exemplary rationales of a prima facie case of obviousnessQuestion: What are some examples of rationales that may support a conclusion of obviousness? Answer: Examples of rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of […]
The post MPEP Q & A 276: Examples of exemplary rationales of a prima facie case of obviousness appeared first on Patent Education Series.
2023-05-2303 minPatent Bar MPEP Q & A PodcastMPEP Q & A 275: Receipt of drawing after the filing dateQuestion: What actions should happen if an examiner discovers new matter in a substitute or additional drawing? Answer: If the examiner discovers new matter in a substitute or additional drawing, the drawing should not be entered and the examiner should describe the new matter that resulted in non-entry in the next Office action. A new […]
The post MPEP Q & A 275: Receipt of drawing after the filing date appeared first on Patent Education Series.
2023-05-0903 minPatent Bar MPEP Q & A PodcastMPEP Q & A 274: Inspection of patent files by the publicQuestion: During what conditions would the complete file wrapper and contents of a patent application published in redacted form not be available? Answer: If an application was published in redacted form, the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of […]
The post MPEP Q & A 274: Inspection of patent files by the public appeared first on Patent Education Series.
2023-04-2503 minPatent Bar MPEP Q & A PodcastMPEP Q & A 273: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee?Question: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee? Answer: Yes, requests for ex parte reexamination filed on or after January 16, 2018 may be filed with a reduced filing fee. This reexamination filing option was created to make it financially less burdensome for requesters […]
The post MPEP Q & A 273: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee? appeared first on Patent Education Series.
2023-04-1102 minPatent Bar MPEP Q & A PodcastMPEP Q & A 272: Limitation that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception.Question: Name a limitation that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception. Answer: Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include: Adding the […]
The post MPEP Q & A 272: Limitation that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception. appeared first on Patent Education Series.
2023-03-2804 minPatent Bar MPEP Q & A PodcastMPEP Q & A 271: What are three pieces of information each patent listed in the Official Gazette may give?Question: What are three pieces of information each patent listed in the Official Gazette may give? Answer: As to each patent listed in the Official Gazette, the following information may be given: (A) Patent number; (B) Title of the invention; (C) Name of inventor(s), city, and state or country of residence; (D) Assignee’s name, city, […]
The post MPEP Q & A 271: What are three pieces of information each patent listed in the Official Gazette may give? appeared first on Patent Education Series.
2023-03-1403 minPatent Bar MPEP Q & A PodcastMPEP Q & A 270: Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for?Question: Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for? Answer: Once appellant has filed a notice of appeal, appellant also may request that prosecution be reopened for the following situations: In response to a new ground of rejection made in an examiner’s answer, […]
The post MPEP Q & A 270: Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for? appeared first on Patent Education Series.
2023-02-2803 minPatent Bar MPEP Q & A PodcastMPEP Q & A 269: Two laboratory techniques the courts have recognized as well-understood, routine, conventional activities in the life science artsQuestion: List two laboratory techniques the courts have recognized as well-understood, routine, conventional activities in the life science arts when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. Answer: The courts have recognized the following laboratory techniques as well-understood, routine, conventional activity in the […]
The post MPEP Q & A 269: Two laboratory techniques the courts have recognized as well-understood, routine, conventional activities in the life science arts appeared first on Patent Education Series.
2023-02-1403 minPatent Bar MPEP Q & A PodcastMPEP Q & A 268: What should the examiner do?Question: If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, what should the examiner do? Answer: If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and […]
The post MPEP Q & A 268: What should the examiner do? appeared first on Patent Education Series.
2023-01-3103 minPatent Bar MPEP Q & A PodcastMPEP Q & A 267: What are the four purposes 35 U.S.C. 101 has been interpreted as imposing?Question: What are the four purposes 35 U.S.C. 101 has been interpreted as imposing? Answer: 35 U.S.C. 101 has been interpreted as imposing four purposes. First, 35 U.S.C. 101 limits an inventor to ONE patent for a claimed invention. If more than one patent is sought, a patent applicant will receive a statutory double patenting […]
The post MPEP Q & A 267: What are the four purposes 35 U.S.C. 101 has been interpreted as imposing? appeared first on Patent Education Series.
2023-01-1704 minPatent Bar MPEP Q & A PodcastMPEP Q & A 266: Name one advantage a CPA has compared to a continuation or divisional applicationQuestion: Name one advantage a CPA has compared to a continuation or divisional application filed under 37 CFR 1.53(b). Answer: A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in […]
The post MPEP Q & A 266: Name one advantage a CPA has compared to a continuation or divisional application appeared first on Patent Education Series.
2023-01-0303 minPatent Bar MPEP Q & A PodcastMPEP Q & A 265: What is the second part of the Alice/Mayo test often referred to as?Question: What is the second part of the Alice/Mayo test often referred to as? Answer: The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. An inventive concept “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. v. Merial LLC. Instead, an […]
The post MPEP Q & A 265: What is the second part of the Alice/Mayo test often referred to as? appeared first on Patent Education Series.
2022-12-2003 minPatent Bar MPEP Q & A PodcastMPEP Q & A 264: How do examiners evaluate integration into a practical application?Question: How do examiners evaluate integration into a practical application? Answer: Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical […]
The post MPEP Q & A 264: How do examiners evaluate integration into a practical application? appeared first on Patent Education Series.
2022-12-0603 minPatent Bar MPEP Q & A PodcastMPEP Q & A 263: How is the markedly different characteristics analysis performed?Question: How is the markedly different characteristics analysis performed? Answer: The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties, and are evaluated based on what is recited in the claim on […]
The post MPEP Q & A 263: How is the markedly different characteristics analysis performed? appeared first on Patent Education Series.
2022-11-2203 minPatent Bar MPEP Q & A PodcastMPEP Q & A 262: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind.Question: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind. Answer: Examples of claims that do not recite mental processes because they cannot be practically performed in the human mind include: a claim to a method for calculating an absolute position of […]
The post MPEP Q & A 262: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind. appeared first on Patent Education Series.
2022-11-0803 minPatent Bar MPEP Q & A PodcastMPEP Q & A 261: What is meant by a fundamental economic practice or principle?Question: What is meant by a fundamental economic practice or principle? Answer: The courts have used the phrases “fundamental economic practices” or “fundamental economic principles” to describe concepts relating to the economy and commerce. Fundamental economic principles or practices include hedging, insurance, and mitigating risks. The term “fundamental” is not used in the sense of […]
The post MPEP Q & A 261: What is meant by a fundamental economic practice or principle? appeared first on Patent Education Series.
2022-10-2502 minPatent Bar MPEP Q & A PodcastMPEP Q & A 257: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time?Question: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time? Answer: The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. “Inventors may apply for a patent […]
The post MPEP Q & A 257: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time? appeared first on Patent Education Series.
2022-08-3003 minPatent Bar MPEP Q & A PodcastMPEP Q & A 256: What type of applications and proceedings may submit drawings that are not black and white line drawings via EFS-Web?Question: What type of applications and proceedings may submit photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings via EFS-Web? Answer: Photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings may be submitted via EFS-Web in only the following types of […]
The post MPEP Q & A 256: What type of applications and proceedings may submit drawings that are not black and white line drawings via EFS-Web? appeared first on Patent Education Series.
2022-08-1603 minPatent Bar MPEP Q & A PodcastMPEP Q & A 255: When do members of a Markush group share a ‘single structural similarity’?Question: When do members of a Markush group share a ‘single structural similarity’? Answer: Members of a Markush group share a “single structural similarity” when they belong to the same recognized physical or chemical class or to the same art-recognized class (prong 1) and the members of a Markush group share a common function or […]
The post MPEP Q & A 255: When do members of a Markush group share a ‘single structural similarity’? appeared first on Patent Education Series.
2022-08-0202 minPatent Bar MPEP Q & A PodcastMPEP Q & A 254: What must a statement under 37 CFR 1.97(e) state?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 […]
The post MPEP Q & A 254: What must a statement under 37 CFR 1.97(e) state? appeared first on Patent Education Series.
2022-07-1903 minPatent Bar MPEP Q & A PodcastMPEP Q & A 253: What must a claim in dependent form contain?Question: What must a claim in dependent form contain? Answer: A claim in dependent form shall contain: (i) a reference to a claim previously set forth, and (ii) then specify a further limitation of the subject matter claimed. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This […]
The post MPEP Q & A 253: What must a claim in dependent form contain? appeared first on Patent Education Series.
2022-07-0503 minPatent Bar MPEP Q & A PodcastMPEP Q & A 252: When the online fee payment in EFS-Web is unavailable, what types of submissions cannot be filed via EFS-Web?Question: When the online fee payment in EFS-Web is unavailable, what types of submissions cannot be filed via EFS-Web, since online fee payment must accompany the submission? Answer: When the online fee payment in EFS-Web is unavailable, the following types of submissions cannot be filed via EFS-Web, since online fee payment must accompany the submission: […]
The post MPEP Q & A 252: When the online fee payment in EFS-Web is unavailable, what types of submissions cannot be filed via EFS-Web? appeared first on Patent Education Series.
2022-06-2103 minPatent Bar MPEP Q & A PodcastMPEP Q & A 251: Benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e)Question: What are the benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) rather than requesting conversion? Answer: Claiming the benefit of the provisional application under 35 U.S.C. 119(e) is less expensive and will result in a longer patent term. The procedure requires […]
The post MPEP Q & A 251: Benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) appeared first on Patent Education Series.
2022-06-0703 minPatent Bar MPEP Q & A PodcastMPEP Q & A 250: What are examples of situations where ownership must be established?Question: What are examples of situations where ownership must be established? Answer: Examples of situations where ownership must be established are when the assignee who is not the applicant: signs a request for status of an application or gives a power to inspect an application; appoints its own registered attorney or agent to prosecute an […]
The post MPEP Q & A 250: What are examples of situations where ownership must be established? appeared first on Patent Education Series.
2022-05-2403 minPatent Bar MPEP Q & A PodcastMPEP Q & A 249: What happens if a claim for foreign priority is presented after the time period set in 37 CFR 1.55?Question: What happens if a claim for foreign priority is presented after the time period set in 37 CFR 1.55? Answer: If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim […]
The post MPEP Q & A 249: What happens if a claim for foreign priority is presented after the time period set in 37 CFR 1.55? appeared first on Patent Education Series.
2022-05-1003 minPatent Bar MPEP Q & A PodcastMPEP Q & A 248: What are the enumerated groupings of abstract ideas defined as?Question: What are the enumerated groupings of abstract ideas defined as? Answer: The enumerated groupings of abstract ideas are defined as: 1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations; 2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions […]
The post MPEP Q & A 248: What are the enumerated groupings of abstract ideas defined as? appeared first on Patent Education Series.
2022-04-2603 minPatent Bar MPEP Q & A PodcastMPEP Q & A 247: When is a protest considered timely?Question: When is a protest considered timely? Answer: A protest is timely if (1) filed prior to the date the application was published under 37 CFR 1.211 or the date a notice of allowance was given or mailed, whichever occurs first, or (2) accompanied by written consent of the applicant and filed prior to the date a notice […]
The post MPEP Q & A 247: When is a protest considered timely? appeared first on Patent Education Series.
2022-04-1203 minPatent Bar MPEP Q & A PodcastMPEP Q & A 246: Will the paper application file itself be available to the public for inspection?Question: If a published patent application is pending and it is not maintained in the IFW system, will the paper application file itself be available to the public for inspection? Answer: Published applications maintained in the IFW system are available on the USPTO Web site in the public Patent Application Information Retrieval (PAIR) system. If […]
The post MPEP Q & A 246: Will the paper application file itself be available to the public for inspection? appeared first on Patent Education Series.
2022-03-2904 minPatent Bar MPEP Q & A PodcastMPEP Q & A 245: How is the effective filing date of a claimed invention determined?Question: How is the effective filing date of a claimed invention determined? Answer: The effective filing date of a claimed invention is determined on a claim-by-claim basis. 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 245: How is the effective filing date of a claimed invention determined? appeared first on Patent Education Series.
2022-03-1503 minPatent Bar MPEP Q & A PodcastMPEP Q & A 244: How can correspondence filed via the Office electronic filing system be signed?Question: How can correspondence filed via the Office electronic filing system be signed? Answer: Correspondence filed via the Office electronic filing system may be signed by a graphic representation of a handwritten signature, or a graphic representation of an S-signature. A graphic representation of a handwritten signature may be created by using a stylus pen […]
The post MPEP Q & A 244: How can correspondence filed via the Office electronic filing system be signed? appeared first on Patent Education Series.
2022-03-0103 minPatent Bar MPEP Q & A PodcastMPEP Q & A 243: Who may sign the substitute statement for a juristic entity?Question: Who may the substitute statement be signed by for a juristic entity? Answer: 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 10.2019. Depending on future changes to the MPEP, the question […]
The post MPEP Q & A 243: Who may sign the substitute statement for a juristic entity? appeared first on Patent Education Series.
2022-02-1503 minPatent Bar MPEP Q & A PodcastMPEP Q & A 242: When will an international application not need a foreign filing license?Question: List two reasons why an international application filed with, or forwarded to, the International Bureau would not need a foreign filing license. Answer: An international application filed with, or forwarded to, the International Bureau must have a foreign filing license unless: (1) the invention was not made in the United States; or (2) a […]
The post MPEP Q & A 242: When will an international application not need a foreign filing license? appeared first on Patent Education Series.
2022-02-0103 minPatent Bar MPEP Q & A PodcastMPEP Q & A 241: Paying maintenance fee due prior to the issuance of a reissue patentQuestion: If the maintenance fee is due prior to the issuance of a reissue patent, what will paying the maintenance fee maintain? Answer: If the maintenance fee is due prior to the issuance of a reissue patent, the maintenance fee must be paid in the original patent to maintain: (1) the reissue patent in force […]
The post MPEP Q & A 241: Paying maintenance fee due prior to the issuance of a reissue patent appeared first on Patent Education Series.
2022-01-1802 minPatent Bar MPEP Q & A PodcastMPEP Q & A 240: What is an example of a situation that does not define ‘substantial utilities’?Question: What is an example of a situation that does not define “substantial utilities”: Answer: The following are examples of situations that do not define “substantial utilities”: (A) Basic research such as studying the properties of the claimed product itself or the mechanisms in which the material is involved; (B) A method of treating an […]
The post MPEP Q & A 240: What is an example of a situation that does not define ‘substantial utilities’? appeared first on Patent Education Series.
2022-01-0403 minPatent Bar MPEP Q & A PodcastMPEP Q & A 239: Can a patent owner avoid double patenting by disclaiming the earlier patent?Question: Can a patent owner avoid double patenting by disclaiming the earlier patent? Answer: “[A] patent owner cannot avoid double patenting by disclaiming the earlier patent.” Chapter Details: The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restrictions in Applications Filed Under35 U.S.C. 111; Double Patenting. The […]
The post MPEP Q & A 239: Can a patent owner avoid double patenting by disclaiming the earlier patent? appeared first on Patent Education Series.
2021-12-2103 minPatent Bar MPEP Q & A PodcastMPEP Q & A 238: What are examples of laws of nature or natural phenomena?Question: List two concepts and products the courts have identified as examples of laws of nature or natural phenomena. Answer: The courts have identified the following concepts and products as examples of laws of nature or natural phenomena: isolated DNA, Ass’n for Molecular Pathology v. Myriad Genetics, Inc.; a cloned farm animal such as a sheep, In […]
The post MPEP Q & A 238: What are examples of laws of nature or natural phenomena? appeared first on Patent Education Series.
2021-12-0704 minPatent Bar MPEP Q & A PodcastMPEP Q & A 237: What is an example of non-limiting claims not directed to statutory categories?Question: Name one example of non-limiting claims not directed to any of the statutory categories. Answer: Non-limiting examples of claims that are 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 […]
The post MPEP Q & A 237: What is an example of non-limiting claims not directed to statutory categories? appeared first on Patent Education Series.
2021-11-2303 minPatent Bar MPEP Q & A PodcastMPEP Q & A 236: Who is the applicant for a patent?Question: Who is the applicant for a patent? Answer: The applicant for patent is all parties identified as the applicant under 37 CFR 1.42(a). Where the applicant is all of the joint inventors under 37 CFR 1.45, one or more of the joint inventor-applicants may be appointed to represent on behalf of all of the joint inventor-applicants. […]
The post MPEP Q & A 236: Who is the applicant for a patent? appeared first on Patent Education Series.
2021-11-0902 minPatent Bar MPEP Q & A PodcastMPEP Q & A 235: What is a mathematical relationship?Question: What is a mathematical relationship? Answer: A mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words or using mathematical symbols. For example, pressure (p) can be described as the ratio between the magnitude of the normal force (F) and area of the surface on contact (A), […]
The post MPEP Q & A 235: What is a mathematical relationship? appeared first on Patent Education Series.
2021-10-2602 minPatent Bar MPEP Q & A PodcastMPEP Q & A 234: How can patent applications be sent to the USPTO?Question: How can patent applications be sent to the U.S. Patent and Trademark Office? Answer: All applications (provisional and nonprovisional) may be sent to the U.S. Patent and Trademark Office by mail using the United States Postal Service, or they may be hand-carried to the Customer Service Window in Alexandria, Virginia. Chapter Details: The answer […]
The post MPEP Q & A 234: How can patent applications be sent to the USPTO? appeared first on Patent Education Series.
2021-10-1202 minPatent Bar MPEP Q & A PodcastMPEP Q & A 233: List application filing dates for determining whether patent is subject to maintenance feesQuestion: What are the application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees? Answer: Application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees are as follows: (A) For an application not claiming benefit of an earlier application, the actual […]
The post MPEP Q & A 233: List application filing dates for determining whether patent is subject to maintenance fees appeared first on Patent Education Series.
2021-09-2803 minPatent Bar MPEP Q & A PodcastMPEP Q & A 232: Can social media websites be a source of prior art?Question: Can social media websites like Facebook be a source of prior art? Answer: Social media websites on the Internet, such as YouTube, Twitter, Facebook, and public forum posts, can be a source of prior art, provided the public accessibility requirements are met. Not all information on social media is considered publicly accessible. Public accessibility […]
The post MPEP Q & A 232: Can social media websites be a source of prior art? appeared first on Patent Education Series.
2021-09-1403 minPatent Bar MPEP Q & A PodcastMPEP Q & A 231: Types of papers that may be filed and processed electronicallyQuestion: What are the types of papers that may be filed and processed electronically? Answer: Registered users may use EFS-Web to submit web-based documents such as ePetitions, Requests for Withdrawal as Attorney or Agent of Record, and eTerminal Disclaimers. EFS-Web permits registered users to file the following auto-processed ePetitions, requests, and eTerminal Disclaimers: Request for […]
The post MPEP Q & A 231: Types of papers that may be filed and processed electronically appeared first on Patent Education Series.
2021-08-3103 minPatent Bar MPEP Q & A PodcastMPEP Q & A 230: What is an ‘improper Markush grouping’?Question: When does a Markush claim contain an ‘improper Markush grouping’? Answer: A Markush claim contains an “improper Markush grouping” if either: (1) the members of the Markush group do not share a “single structural similarity” or (2) the members do not share a common use. Chapter Details: The answer to this question can be […]
The post MPEP Q & A 230: What is an ‘improper Markush grouping’? appeared first on Patent Education Series.
2021-08-1702 minPatent Bar MPEP Q & A PodcastMPEP Q & A 229: When are the claims of a new application finally rejected in the first Office action?Question: When may the claims of a new application be finally rejected in the first Office action? Answer: The claims of a new application may be finally rejected in the first Office action in those situations where: (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) […]
The post MPEP Q & A 229: When are the claims of a new application finally rejected in the first Office action? appeared first on Patent Education Series.
2021-08-0303 minPatent Bar MPEP Q & A PodcastMPEP Q & A 228: Who is listed on the assignee section of a patent?Question: Who will be listed in the assignee section of a patent? Answer: The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or for any patent that is granted. Any desired change to the designated applicant must be made […]
The post MPEP Q & A 228: Who is listed on the assignee section of a patent? appeared first on Patent Education Series.
2021-07-2002 minPatent Bar MPEP Q & A PodcastMPEP Q & A 227: What are the requirements for request for a corrected publication?Question: If the Office made a material mistake in a patent application publication that is apparent from the Office records and applicant wishes to correct the material mistake, applicant may file a request for corrected publication. What are the requirements for request for a corrected publication? Answer: If the Office made a material mistake in […]
The post MPEP Q & A 227: What are the requirements for request for a corrected publication? appeared first on Patent Education Series.
2021-07-0603 minPatent Bar MPEP Q & A PodcastMPEP Q & A 226: When is a rejection on the ground of lack of utility appropriate?Question: When is a rejection on the ground of lack of utility appropriate? Answer: A rejection on the ground of lack of utility is appropriate when: it is not apparent why the invention is “useful” because applicant has failed to identify any specific and substantial utility and there is no well-established utility, or an assertion […]
The post MPEP Q & A 226: When is a rejection on the ground of lack of utility appropriate? appeared first on Patent Education Series.
2021-06-2203 minPatent Bar MPEP Q & A PodcastMPEP Q & A 225: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification.Question: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification? Answer: Reasons, why the prior art element should not be considered an equivalent to the invention disclosed in the specification, may include: teachings in the specification that the particular prior art is […]
The post MPEP Q & A 225: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification. appeared first on Patent Education Series.
2021-06-0803 minPatent Bar MPEP Q & A PodcastMPEP Q & A 224: What are the “Appropriate circumstances” to vacate the order granting reexamination?Question: What are the “Appropriate circumstances” to vacate the order granting reexamination? Answer: “Appropriate circumstances” exist to vacate the order granting reexamination where, for example: (A) the reexamination order is facially not based on prior art patents or printed publications; (B) reexamination is prohibited under 37 CFR 1.907; (C) all claims of the patent were […]
The post MPEP Q & A 224: What are the “Appropriate circumstances” to vacate the order granting reexamination? appeared first on Patent Education Series.
2021-05-2503 minPatent Bar MPEP Q & A PodcastMPEP Q & A 223: What Size Non-Patent Documents Require Document Size Fees?Question: Document size fees are only applicable to non-patent documents having greater than what number of pages? Answer: The document size fees are only applicable to non-patent documents having greater than 20 pages. Non-patent documents having 20 pages or less are not subject to the document size fees. Chapter Details: The answer to this question […]
The post MPEP Q & A 223: What Size Non-Patent Documents Require Document Size Fees? appeared first on Patent Education Series.
2021-05-1102 minPatent Bar MPEP Q & A PodcastMPEP Q & A 222: What are the Three Conditions That Must be Satisfied …?Question: AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or subject to an obligation of assignment to the same person in applying common ownership […]
The post MPEP Q & A 222: What are the Three Conditions That Must be Satisfied …? appeared first on Patent Education Series.
2021-04-2705 minPatent Bar MPEP Q & A PodcastMPEP Q & A 221: What are the Three Types of Patent Documents Available as Prior Art …?Question: AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor. What are they? Answer: AIA 35 U.S.C. 102(a)(2) sets forth three types of […]
The post MPEP Q & A 221: What are the Three Types of Patent Documents Available as Prior Art …? appeared first on Patent Education Series.
2021-04-1303 minPatent Bar MPEP Q & A PodcastMPEP Q & A 220: What are the Section 42.208 paragraph (c) Amendments?Question: What was Section 42.208 paragraph (c) amended to in the supplement entitled: Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board? Answer: Section 42.208 is amended by revising paragraph (c) to read as follows: * * * * * (c) Sufficient grounds. Post-grant review shall not be instituted […]
The post MPEP Q & A 220: What are the Section 42.208 paragraph (c) Amendments? appeared first on Patent Education Series.
2021-03-3003 minPatent Bar MPEP Q & A PodcastMPEP Q & A 219: When may the OPAP object to and require corrected drawings within a set time period?Question: When may the OPAP object to and require corrected drawings within a set time period? Answer: The OPAP may object to and require corrected drawings within a set time period, if the drawings: have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough […]
The post MPEP Q & A 219: When may the OPAP object to and require corrected drawings within a set time period? appeared first on Patent Education Series.
2021-03-1603 min