Patent Bar Mpep Q & A Podcast

Question: 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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

Question: What is the issue of correlation as related to matters of invitro/in vivo? Answer: 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 08.2017. Depending on future changes to the MPEP, the question and answer may or […] The post MPEP Q & A 218: What is the issue of correlation about as related to matters of invitro/in vivo? appeared first on Patent Education Series.

Question: What was Section 42.23 paragraph (b) amended to in the supplement entitled: Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board? Answer: Section 42.23 is amended by revising paragraph (b) to read as follows: 42.23 Oppositions and replies. * * * * * (b) All arguments for the […] The post MPEP Q & A 217: What are the Section 42.23 paragraph (b) Amendments? appeared first on Patent Education Series.

Question: What is the time limit for establishing the International Search Report and the Written Opinion of the International Searching Authority? Answer: Publication of the international application occurs at 18 months from the earliest priority date or, where there is no priority date, 18 months from the international filing date. The international search report is […] The post MPEP Q & A 216: Time for Establishing ISR and WO of the International Search Authority appeared first on Patent Education Series.

Question: When did the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’ take effect? Answer: This rule is effective May 2, 2016, and applies to all AIA petitions filed on or after the effective date and to any ongoing AIA preliminary proceeding or trial before the […] The post MPEP Q & A 215: When Did Amendments to the Rules of Practice for Trials Before PTAB Take Effect? appeared first on Patent Education Series.

Question: According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’, what are sufficient grounds for a post-grant review? Answer: 37 CFR 42.208 (C) states that Post-grant review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting […] The post MPEP Q & A 214: What are Sufficient Grounds for Post-Grant Review? appeared first on Patent Education Series.

Question: Can attorney arguments take the place of evidence? Answer: No, the arguments of counsel cannot take the place of evidence in the record. Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, […] The post MPEP Q & A 213: Can Attorney Arguments Take the Place of Evidence? appeared first on Patent Education Series.

Question: According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’, what is the number of days before an oral argument for the exchange of exhibits? Answer: The number of days before an oral argument for the exchange of exhibits is at least 7 days. […] The post MPEP Q & A 212: What is the Number of Days Before an Oral Argument for Exchange of Exhibits? appeared first on Patent Education Series.