Patent Bar Mpep Q & A Podcast

Question: List two computer functions recognized to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner. Answer: The courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: Performing repetitive calculations, Receiving, processing, and storing data, Electronically scanning or extracting data from a physical document, Electronic recordkeeping, Automating mental tasks, and Receiving or transmitting data over a network, e.g., using the Internet to gather data. Chapter Details: The answer to this question can be found in the following supplement: July 2015… The post MPEP Q & A 108: Computer Functions Recognized to be Well‐Understood, Routine, and Conventional Functions When They are Claimed in a Merely Generic Manner appeared first on Patent Education Series.

Question: Name two times when an applicant may want to consider an explicit petition for foreign filing licenses. Answer: Explicit petitions for foreign filing licenses may be considered by applicants when: the filing receipt license is not granted; the filing receipt has not yet been issued; there is no corresponding U.S. application; subject matter additional to that already licensed is sought to be licensed; or expedited handling is requested. 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 from the… The post MPEP Q & A 107: Times When Explicit Petitions for Foreign Filing Licenses May Be Considered by Applicants appeared first on Patent Education Series.

Question: Name two indicia that a continuing reissue application is being filed. Answer: Indicia that a continuing reissue application is being filed are: A reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration. A specification and/or claims in proper double column reissue format. Amendments in proper format. A statement of assignee ownership and consent by assignee. A correct transmittal letter identifying the application as a reissue filing. An identification of the application as being “a reissue continuation of application number [the parent reissue application]” or “a continuation and reissue of application number [the parent reissue application]”… The post MPEP Q & A 106: Indicia That a Continuing Reissue Application is Being Filed appeared first on Patent Education Series.

Question: For participation in the Global/IP5 PPH pilot program at the USPTO, does the applicant need to submit a petition fee under 37 C.F.R. 1.17(h). Answer: No, for participation in the Global/IP5 PPH pilot program at the USPTO, the applicant must submit: A request for participation in the Global/IP5 PPH pilot program and a request that the U.S. application be advanced out of turn for examination by order of the Director to expedite the business of the Office under 37 CFR 1.102(a). A petition fee under 37 CFR 1.17(h) is NOT required. Chapter Details: The answer to this question can… The post MPEP Q & A 105: Petition Fee Requirements For Participation in the PPH appeared first on Patent Education Series.

Question: Name one item the submission of Article 19 amendments should comprise. Answer: The submission of Article 19 amendments should comprise: (i) a complete set of claims in replacement of the claims originally filed (ii) a letter which must indicate the differences between the claims as filed and those as amended plus the basis for the amendments (iii) an optional statement under Article 19 Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers the patent cooperation treaty or PCT. The answer is from the 9th Edition, Revision 07.2015. Depending on… The post MPEP Q & A 104: What Submission of Article 19 Amendments Should Comprise appeared first on Patent Education Series.

Question: What are the grounds for seeking inter partes review limited to compared with post-grant review? Answer: The grounds for seeking inter partes review are limited to issues raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications. In contrast, the grounds for seeking post-grant review include any ground that could be raised under 35 U.S.C. 282(b)(2) or (3). Such grounds for post-grant review include grounds that could be raised under 35 U.S.C. 102 or 103 including those based on prior art consisting of patents or printed publications. Other grounds available… The post MPEP Q & A 103: What Grounds for Seeking Inter Partes Review are Limited to Compared with Post-Grant Review appeared first on Patent Education Series.

Question: What is an earlier concluded examination or review of the patent? Answer: An earlier concluded examination or review of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; (C) the examination of the patent in an earlier concluded reexamination or supplemental examination; (D) the review of the patent in an earlier concluded trial by the Patent Trial and Appeal Board, such as a post-grant review, inter partes review, or covered business method review of… The post MPEP Q & A 102: Earlier Concluded Examination or Review of Patent appeared first on Patent Education Series.

Question: What must a petition for a derivation proceeding provide? Answer: In a petition for a derivation proceeding, the petitioner must: (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application. Chapter Details: The answer to this question can be found in the PTO supplement known as, “Derivation Proceeding Final Rules”. This supplement covers derivation proceedings. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Section Summary:… The post MPEP Q & A 101: Petition for a Derivation Proceeding appeared first on Patent Education Series.

Question: List two activities that can be used as an indication of commercial exploitation? Answer: The following activities should be used by the examiner as indicia of this subjective commercial intent: Preparation of various contemporaneous “commercial” documents, e.g., orders, invoices, receipts, delivery schedules, etc.; Preparation of price lists and distribution of price quotations; Display of samples to prospective customers; Demonstration of models or prototypes, especially at trade conventions, and even though no orders are actually obtained; Use of an invention where an admission fee is charged; and Advertising in publicity releases, brochures, and various periodicals. Chapter Details: The answer to… The post MPEP Q & A 100: Activities Used as an Indication of Commercial Exploitation appeared first on Patent Education Series.

Question: List two types of information that are considered status information. Answer: Status information of an application means only the following information: whether the application is pending, abandoned, or patented; whether the application has been published; the application number or the serial number plus any one of the filing date of the national application, the international filing date or the date of entry into the national stage; and whether another application claims the benefit of the application Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers secrecy, access, national security… The post MPEP Q & A 99: Types of Information Considered Status Information appeared first on Patent Education Series.

Question: List at least 2 fees that are reduced by 75% for micro entities. Answer: The fees which are reduced by 75% for micro entities include filing fees (nonprovisional and provisional), search fees, examination fees, issue fees, and appeal fees for utility, design, plant, and reissue patent applications. Also included are patent maintenance fees including the maintenance fee grace period surcharges as well as the surcharge for a petition to accept a delayed maintenance fee payment in order to reinstate an expired patent, claims fees, application size fees, and the surcharge required by 37 CFR 1.16(f) if either the basic… The post MPEP Q & A 98: Fees Reduced by 75% for Micro Entities appeared first on Patent Education Series.

Question: What must any nonstatutory double patenting rejection made under the obviousness analysis make clear? Answer: Any nonstatutory double patenting rejection made under the obviousness analysis should make clear: (A) The differences between the inventions defined by the conflicting claims — a claim in the patent compared to a claim in the application; and (B) The reasons why a person of ordinary skill in the art would conclude that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent. Chapter Details: The answer to this question can… The post MPEP Q & A 97: Nonstatutory Double Patenting Rejection Made Under Obviousness Analysis appeared first on Patent Education Series.

Question: When is a nonpublication request not appropriate? Answer: A nonpublication request is not appropriate if applicants have already filed a counterpart foreign or international application in another country, or under a multilateral international agreement, that requires publication of applications at eighteen months after filing. Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers statutory invention registration (SIR)s and pre-grant publications. 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:… The post MPEP Q & A 96: When a Nonpublication Request is Not Appropriate appeared first on Patent Education Series.

Question: What may an examiner do after he or she has considered the issues on appeal? Answer: After an appeal brief has been filed and the examiner has considered the issues on appeal, the examiner may: reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner ; allow the application if the examiner determines that the rejections have been overcome and no new ground of rejection is appropriate; or maintain the appeal by conducting an appeal conference and drafting an examiner’s answer. Chapter Details: The answer to this question can be found in chapter… The post MPEP Q & A 95: What an Examiner May Do After Considering the Issues on Appeal appeared first on Patent Education Series.

Question: Except as provided in 37 C.F.R. 11.107 (b), a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. When does a concurrent conflict of interest exist? Answer: A concurrent conflict of interest exists if: The representation of one client will be directly adverse to another client; or There is a significant risk that the representation of one or more clients will be materially limited by the practitioner’s responsibilities to another client, a former client or a third person or by a personal interest of the practitioner. Chapter Details: The answer to this question… The post MPEP Q & A 94: When a Concurrent Conflict of Interest Exists appeared first on Patent Education Series.

Question: What is essential material? Answer: “Essential material” is defined as that which is necessary to: provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor; describe the claimed invention in terms that particularly point out and distinctly claim the invention; or describe the structure, material,… The post MPEP Q & A 93: What is Essential Material appeared first on Patent Education Series.

Question: What are the two statutory requirements that must be met before a Certificate of Correction for an applicant’s mistake to issue? Answer: Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s mistake may issue. The first statutory requirement concerns the nature, i.e., type, of the mistake for which a correction is sought. The mistake must be: of a clerical nature, of a typographical nature, or a mistake of minor character. The second statutory requirement concerns the nature of the proposed correction. The correction must not involve changes which would: constitute new matter or… The post MPEP Q & A 92: Statutory Requirements to be Met Before Certificate of Correction for an Applicant’s Mistake to Issue appeared first on Patent Education Series.

Question: List three non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference. Answer: Non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference include: Biological or pharmacological functions or activities; Chemical and physical properties; Phenotype, including functional and structural characteristics; and Structure and form, whether chemical, genetic or physical. Chapter Details: The answer to this question can be found in the PTO supplement known as, 2014 Interim Guidance on Patent Subject Matter Eligibility. This supplement covers subject matter eligibility. This is… The post MPEP Q & A 91: Non-Limiting Examples of Types of Characteristics Considered by the Courts to Determine Marked Difference appeared first on Patent Education Series.

Question: What 5 conditions should an examiner check for before requiring an applicant to add a claim to provoke an interference? Answer: The 5 conditions an examiner should check for before requiring an applicant to add a claim to provoke an interference include:  that the application is otherwise completed  that the required claim does not encompass prior art or would not otherwise be barred  that the applicant has not stated that the commonly described subject matter is not the applicant’s invention  that the application provides adequate support under 35 U.S.C. 112, 1st paragraph for the subject matter of the required claim… The post MPEP Q & A 90: Conditions an Examiner Should Check for Before Requiring Applicant to Add Claim to Provoke Interference appeared first on Patent Education Series.

Question: List 3 examples of concepts courts have found to be laws of nature and natural phenomena. Answer: The types of concepts courts have found to be laws of nature and natural phenomena are shown by these cases, which are intended to be illustrative and not limiting: An isolated DNA; a correlation that is the consequence of how a certain compound is metabolized by the body; electromagnetism to transmit signals; and the chemical principle underlying the union between fatty elements and water. Chapter Details: The answer to this question can be found in the PTO supplement known as, 2014 Interim… The post MPEP Q & A 89: Concepts the Courts Have Found to be Laws of Nature and Natural Phenomena appeared first on Patent Education Series.