Patent Bar MPEP Q & A Podcast

Question: When can claims be finally rejected in a first Office action for a new application? Answer: For a new application, claims may be finally rejected in the first Office action when: (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new […] The post MPEP Q & A 353: When can claims be finally rejected in a first Office action for a new application? appeared first on Patent Education Series.

Question: List 3 fees that are reduced by 80 percent for micro entities. Answer: The fees which are reduced by 80 percent for micro entities include: filing fees (nonprovisional and provisional) search fees examination fees issue fees appeal fees for utility design, plant, and reissue patent applications patent maintenance fees including the maintenance fee grace […] The post MPEP Q & A 352: List 3 fees that are reduced by 80 percent for micro entities. appeared first on Patent Education Series.

Question: List 2 situations where RCE provisions do not apply. Answer: The RCE provisions do not apply to: (A) a provisional application; (B) an application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995; (C) an international application filed under 35 U.S.C. 363 before June 8, 1995, or an […] The post MPEP Q & A 351: List 2 situations where RCE provisions do not apply. appeared first on Patent Education Series.

Question: What does application information include? Answer: Application information includes the title of the invention, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the type of application (e.g., utility, plant, design, reissue, provisional). Chapter Details: The answer to this […] The post MPEP Q & A 350: What does application information include? appeared first on Patent Education Series.

Question: As of December 29. 2022, list 3 fees that are reduced by 60 percent for small entities? Answer: As of December 29. 2022, the following fees are reduced by 60 percent for small entities: patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees; […] The post MPEP Q & A 349: List 3 fees that are reduced by 60 percent for small entities. appeared first on Patent Education Series.

Question: Give 3 examples of asexually propagated plants. Answer: Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, apomictic seeds, bulbs, division, slips, rhizomes, runners, corms, tissue culture, nucellar embryos, etc. Chapter Details: The answer to this question […] The post MPEP Q & A 348: Give 3 examples of asexually propagated plants. appeared first on Patent Education Series.

Question: What rule are design practitioners registered under and what can they practice in? Answer: Design patent practitioners are registered under 37 C.F.R. 11.6(d) and can only practice in design patent matters. In contrast, patent practitioners registered under 37 C.F.R. 11.6(a)-(c) can practice in all patent matters, which includes design patent matters. Chapter Details: The […] The post MPEP Q & A 347: What rule are design practitioners registered under and what can they practice in? appeared first on Patent Education Series.

Question: When is a Sequence Listing XML required? Answer: When an application filed under 35 U.S.C. 111(a) having a filing date on or after July 1, 2022, or an application which entered the national stage, having an international filing date on or after July 1, 2022, contains disclosure of nucleotide and/or amino acid sequences, a […] The post MPEP Q & A 346: When is a Sequence Listing XML required? appeared first on Patent Education Series.

Question: List two types of individuals that affidavits or declarations filed under 37 C.F.R. 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103 can be made by. Answer: Affidavits or declarations filed under 37 C.F.R. 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103 must be made by either: […] The post MPEP Q & A 345: List two types of individuals that affidavits filed under 37 C.F.R. 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103 can be made by. appeared first on Patent Education Series.

Question: How can an applicant overcome a statutory double patenting rejection? Answer: A terminal disclaimer cannot be filed to obviate a statutory double patenting rejection. A statutory double patenting rejection can be overcome by canceling or amending the conflicting claims so they are no longer coextensive in scope. A complete response to a statutory double […] The post MPEP Q & A 344: How can an applicant overcome a statutory double patenting rejection? appeared first on Patent Education Series.

Question: Can any further submission of prior art by the same real party in interest be considered after the filing of the protest? Answer: After the filing of the protest, no further submission of prior art by the same real party in interest will be considered, except for new, non-cumulative prior art submitted requires that a […] The post MPEP Q & A 343: Can prior art submissions occur after the filing of the patent? appeared first on Patent Education Series.

Question: When has a 35 U.S.C. 102 rejection over multiple references been held to be proper when the extra references are cited? Answer: Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the […] The post MPEP Q & A 342: When is a 35 U.S.C. 102 rejection over multiple references held to be proper? appeared first on Patent Education Series.

Question: What happens when the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent? Answer: When the claim for foreign priority or the certified copy of the foreign application is filed […] The post MPEP Q & A 341: Circumstances surrounding claim for foreign priority. appeared first on Patent Education Series.

Question: What are some non-limiting examples of claims that are 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 […] The post MPEP Q & A 340: What are non-limiting examples of claims that are not directed to any of the statutory categories? appeared first on Patent Education Series.

Question: When is information material to patentability according to the duty to disclose? Answer: Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of […] The post MPEP Q & A 339: When is information material to patentability according to the duty to disclose? appeared first on Patent Education Series.

Question: What are two of the requirements for an English language translation of a non-English language foreign application? Answer: If an English language translation of a non-English language foreign application is required: 1) the translation must be that of the certified copy (of the foreign application as filed) and 2) it must be filed together […] The post MPEP Q & A 338: Requirements for an English language translation of a non-English language foreign application. appeared first on Patent Education Series.

Question: List three examples of the kinds of information, in addition to prior art documents, that can be relied on in a protest. Answer: The following are examples of the kinds of information, in addition to prior art documents, which can be relied on in a protest: (A) Information demonstrating that the invention was publicly known […] The post MPEP Q & A 337: Kinds of information that can be relied on in a protest. appeared first on Patent Education Series.

Question: When should relevant documentation submitted to a regulatory review body be submitted for the Office for review? Answer: Where relevant documentation is submitted to a regulatory review body, such as the U.S. Food & Drug Administration (FDA), and is material to any pending patent application or reexamination proceeding, such documentation should be submitted for […] The post MPEP Q & A 336: Circumstances when relevant documentation should be submitted to regulatory review body. appeared first on Patent Education Series.

Question: Under what circumstances will the international and search fees be refunded? Answer: The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau. The search fee will be refunded if the application is withdrawn […] The post MPEP Q & A 335: Under what circumstances will international and search fees be refunded? appeared first on Patent Education Series.

Question: Which two types of assignee(s) may conduct either the prosecution of a national application for patent or a reexamination proceeding? Answer: The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are: (1) A single assignee. An assignee of the entire right, title and interest in the […] The post MPEP Q & A 334: Assignee(s) who may conduct prosecution or reexamination. appeared first on Patent Education Series.

Question: If additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, is a supplemental reissue oath or declaration required? Answer: For applications filed on or after September 16, 2012, if additional defects or errors are corrected in the reissue after the filing of the reissue oath […] The post MPEP Q & A 333: When a supplemental reissue oath or declaration is required. appeared first on Patent Education Series.

Question: Is a provisional application that is relied upon for priority in a U.S. patent and is abandoned available through the Patent Center? Answer: Yes, a provisional application that is relied upon for priority in a U.S. patent and is abandoned may be available through the Patent Center. Generally though, provisional applications are not published and […] The post MPEP Q & A 332: Availability of provisional application relied on for priority and abandoned. appeared first on Patent Education Series.

Question: Does the new ground of rejection raised by the Board in an appeal reopen prosecution? Answer: The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection was made includes an affirmance […] The post MPEP Q & A 331: Does new ground of rejection raised by the Board in an appeal reopen prosecution? appeared first on Patent Education Series.

Question: Name two items the Technology Center will verify when a Request for Continuing Examination is initially processed. Answer: An RCE will be initially processed by the Technology Center (TC) assigned the application. Technical support personnel in the TC will verify that: (A) the application is a utility or plant application (i.e., not a design […] The post MPEP Q & A 330: Items the Technology Center will verify when a Request for Continuing Examination is initially processed. appeared first on Patent Education Series.

Question: What non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period? Answer: The following non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period: (1) Petitioner engaged in significant, constructive efforts with the examiner to resolve the issue outside of the petitions […] The post MPEP Q & A 329: Non-exhaustive factors to determine whether to accept a petition after the 2-month period. appeared first on Patent Education Series.

Question: What are the reasons for insisting upon a restriction? Answer: Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each inventionas claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious search and/or examination burden on the […] The post MPEP Q & A 328: Reasons for insisting upon a restriction? appeared first on Patent Education Series.

Question: What information should also be submitted for each patent on which a maintenance fee or surcharge is paid? Answer: The following information should also be submitted for each patent on which a maintenance fee or surcharge is paid: (A) the fee year (i.e., 3 1/2, 7 1/2, or 11 1/2 year fee); (B) the […] The post MPEP Q & A 327: Information submitted for each patent on which a maintenance fee or surcharge is paid. appeared first on Patent Education Series.

Question: What applications count for the filing limits for the purposes of establishing micro entity status under the “gross income” basis? Answer: For purposes of establishing micro entity status under the “gross income” basis, the application filing limit includes: (i) previously filed U.S. nonprovisional applications (e.g., utility, design, plant, continuation, and divisional applications), (ii) previously filed […] The post MPEP Q & A 326: Applications that count for “gross income” basis micro entity status. appeared first on Patent Education Series.

Question: List two pieces of information that should be placed on the first page of a protest. Answer: Each protest should be clearly identified as a “PROTEST UNDER 37 CFR 1.291.” It is also important that any protest against a pending application specifically identify the application to which the protest is directed with the identification being […] The post MPEP Q & A 325: List the pieces of information that should be placed on the first page of a protest. appeared first on Patent Education Series.

Question: Name at least two items that must be submitted when adding a “Sequence Listing” after the application filing date. Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: (1) a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text […] The post MPEP Q & A 324: Name items that must be submitted when adding a “Sequence Listing” after the application filing date. appeared first on Patent Education Series.

Question: Where a restriction (including an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, can the non-elected invention(s) and non-claimed, distinct subject matter be […] The post MPEP Q & A 323: Can distinct subject matter be recovered by filing a reissue application in specific cases? appeared first on Patent Education Series.

Question: What type of Demand will prevent an international application designating the U.S. to enter the national stage via the U.S. Designated Office? Answer: An international application designating the U.S. will enter the national stage via the U.S. Designated Office unless a Demand electing the U.S. is filed under PCT Article 31 whereupon entry will be via […] The post MPEP Q & A 322: What type of Demand will prevent an international application designating the U.S. to enter? appeared first on Patent Education Series.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

Question: 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.

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.

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.

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.

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.

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.

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.