Patent Bar Mpep Q & A Podcast

Question: Name one type of issue that may trigger a rejection. Answer: Rejections are usually made due to issues with one of the following: unpatentable subject matter or lack of utility (35 U.S.C. 101) issues with novelty (35 U.S.C. 102) issues with obviousness (35 U.S.C. 103) lack of subject matter issues with the written description, enablement and best mode (35 U.S.C. 112) Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP,… The post MPEP Q & A 48: Type of Issues Triggering Rejections appeared first on Patent Education Series.

Question: What must a party wishing to correct a typographical error on a recorded cover sheet submit? Answer: A party who wishes to correct a typographical error on a recorded cover sheet must submit the following: a copy of the originally recorded assignment document (or other document affecting title); a corrected cover sheet; and the required fee for each application or patent to be corrected. Chapter Details: The answer to this question can be found in chapter 300 of the MPEP. This chapter covers Ownership and Assignment. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes… The post MPEP Q & A 47: Correction of a Typographical Error on a Recorded Cover Sheet appeared first on Patent Education Series.

Question: When does an item of information raise a substantial new question of patentability or SNQ? Answer: An item of information raises an SNQ where there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether or not the claim is patentable unless the same question was previously raised in another Office proceeding or has already been decided by a final holding of invalidity by a federal court. Chapter Details: The answer to this question can be found in chapter 2800 of the MPEP. This chapter covers Supplemental Examination. The answer is… The post MPEP Q & A 46: Item of Information that Raises a Substantial New Question of Patentability appeared first on Patent Education Series.

Question: When must the Demand for international preliminary examination be made? Answer: The Demand must be made prior to the expiration of whichever of the following periods expires later: (A) three months from the date of transmittal to the applicant of the international search report or of the declaration referred to in PCT Article 17(2)(a), and of the written opinion; or (B) 22 months from the priority date. Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers the patent cooperation treaty. Section Summary: This question and answer comes from section… The post MPEP Q & A 45: Timing of Demand for International Preliminary Examination appeared first on Patent Education Series.

Question: List two examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality. Answer: Examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality would be: common knowledge in the art; the appearance of the design itself; the specification of a related utility patent; or information provided in the specification. Chapter Details: The answer to this question can be found in chapter 1500 of the MPEP. This chapter covers design patents. Section Summary: This question and answer comes from section 1504.01(c)  of… The post MPEP Q & A 44: Proper Evidentiary Basis for a Rejection Under 35 U.S.C. 171 appeared first on Patent Education Series.

Question: Name two ways a patent may be corrected or amended. Answer: A patent may be corrected or amended in seven ways, namely by: reissue, the issuance of a certificate of correction which becomes a part of the patent, disclaimer, reexamination, inter partes review, post grant review, and covered business method review. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers the correction of patents. Section Summary: This question and answer comes from section 1401 of the MPEP.  The following is a brief summary of section 1401. 1401    Reissue… The post MPEP Q & A 43: Ways a Patent May be Corrected or Amended appeared first on Patent Education Series.

Question: Name one mechanism in which asexually propagated plants are reproduced. 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 or inarching. Chapter Details: The answer to this question can be found in chapter 1600 of the MPEP. This chapter covers plant patents. Section Summary: This question and answer comes from section 1601 of the MPEP.  The following is a brief summary of section 1601. 1601     Introduction: The Act, Scope, Type of Plants Covered This section provides an introduction to plant patents.  Essentially,… The post MPEP Q & A 42: Reproduction of Asexually Propagated Plants appeared first on Patent Education Series.

Question: Why might the USPTO withdraw an application from issue after payment of the issue fee? Answer: The USPTO might withdraw an application from issue after payment of the issue fee due to: (1) a mistake on the part of the Office: (2) a violation of 37 CFR 1.56 or illegality in the application; (3) unpatentability of one or more claims; or (4) for interference or derivation. Chapter Details: The answer to this question can be found in chapter 1300 of the MPEP. This chapter covers allowance and issue. Section Summary: This question and answer comes from section 1308 of the… The post MPEP Q & A 41: Withdrawing an Application From Issue After Payment of the Issue Fee appeared first on Patent Education Series.

Question: Name two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection. Answer: The following are two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection: A remand to consider an Information Disclosure Statement; and A remand for the examiner to consider a reply brief. Chapter Details: The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeals. Section Summary: This question and… The post MPEP Q & A 40: Situations Where There May be a Remand For Examiner Action Not For Further Consideration of a Rejection appeared first on Patent Education Series.

Question: List 2 types of applications that will not be published. Answer: The Office will not publish the following applications: Provisional applications; Design applications; International design applications; and Reissue applications (because reissue applications are not kept confidential). Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions. Section Summary: This question and answer comes from section 1120 of the MPEP.  The following is a brief summary of section 1120. 1120    Eighteen-Month Publication  of Patent Applications  This section covers details on… The post MPEP Q & A 39: Types of Applications That Will Not be Published appeared first on Patent Education Series.

Question: What are the most common types of linking claims? Answer: The most common types of linking claims which, if allowable, act to prevent restriction between inventions that can otherwise be shown to be divisible, are (A) genus claims linking species claims; and (B) subcombination claims linking plural combinations. Chapter Details: The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting. Section Summary: This question and answer comes from section 809 of the MPEP.  The following is a brief summary of section 809.… The post MPEP Q & A 38: Common Types of Linking Claims appeared first on Patent Education Series.

Question: List 2 non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6. Answer: The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for” Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the… The post MPEP Q & A 37: Non-Structural Generic Placeholders Invoking 35 USC 112(f) appeared first on Patent Education Series.

Question: List two documents a person acting in a representative capacity may not sign. Answer: A person acting in a representative capacity may not sign: a power of attorney, a document granting access to an application, a change of correspondence address, a terminal disclaimer, or a request for an express abandonment without filing a continuing application. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP 9th Edition, Revision 07.2015. This chapter covers Representative of Applicant or Owner. Depending on future changes to the MPEP, the question and answer may or may not be… The post MPEP Q & A 36: Documents a Person Acting in a Representative Capacity May Not Sign appeared first on Patent Education Series.

re   Question: List one example of what an oath or declaration must do. Answer: An oath or declaration must: identify the inventor or joint inventor executing the oath or declaration by his or her legal name; identify the application to which it is directed; include a statement the person executing the oath or declaration believes the named inventor or joint inventors to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and state that the application was made or authorized to be made… The post MPEP Q & A 35: Example of What an Oath or Declaration Must Do appeared first on Patent Education Series.

Question: Name one item that an applicant may submit, in addition to a statement regarding common ownership as objective evidence that common ownership existed? Answer: The applicant may submit the following evidence: (A) Reference to assignments recorded in the U.S. Patent and Trademark Office which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s); (B) Copies of unrecorded assignments which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s) are filed in each of the applications; (C) An affidavit or… The post MPEP Q & A 34: Item an Applicant May Submit as Objective Evidence That Common Ownership Existed appeared first on Patent Education Series.

Question: What is a divisional application? Answer: A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed in the earlier or parent application. Chapter Details: The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types, Cross-Noting, and Status of Application. The answer is from the 9th… The post MPEP Q & A 33: What is a Divisional Application? appeared first on Patent Education Series.

Question: Name one circumstance where joint ownership exists. Answer: Joint ownership occurs when any of the following cases exist: Multiple partial assignees of the patent property; Multiple inventors who have not assigned their right, title and interest; or A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest. Chapter Details: The answer to this question can be found in chapter 300 of the MPEP. This chapter covers Ownership and Assignment. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not… The post MPEP Q & A 32: Circumstance Where Joint Ownership Exists appeared first on Patent Education Series.

Question: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, what must the applicant do? Answer: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, the burden then shifts to the applicant to: show that the Office erred in these findings or provide other evidence to show that the claimed subject matter would have been nonobvious. 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 post MPEP Q & A 31: Applicant Action After Invention is Found Obvious appeared first on Patent Education Series.

Question: List the 3 categories the elements of an international design application fall into. Answer: The elements of an international design application fall into the following three categories: mandatory contents which include items required in all international design applications. additional mandatory contents which include elements that are required by certain Contracting Parties and therefore are mandatory in any international design application that designates such Contracting Parties. optional contents which are items that may be included in an international design application. Chapter Details: The answer to this question can be found in chapter 2900 of the MPEP. This chapter covers International Design Applications. The answer is… The post MPEP Q & A 30: Elements of an International Design Application appeared first on Patent Education Series.

Question: Who has the authority to grant access to a pending or abandoned application filed on or after September 16, 2012 that is in confidence? Answer: For applications filed on or after September 16, 2012, the following individuals may provide a written authority for access to a pending or abandoned application kept in confidence: the applicant a patent practitioner of record the assignee or an assignee of an undivided part interest or an inventor 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… The post MPEP Q & A 29: Access to a Pending or Abandoned Application Filed On or After September 16, 2012 appeared first on Patent Education Series.