Patent Bar Mpep Q & A Podcast

Question: When the publication or issue date is later than the current date (i.e., the date of the request), who will that information be given to? Answer: When the publication or issue date is later than the current date (i.e., the date of the request), such information may be given only to the applicant, an inventor, the assignee of record, or the attorney or agent of record. 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 9th Edition,… The post MPEP Q & A 171: Instances Where Publication or Issue Date is Later Than the Current Date appeared first on Patent Education Series.

Question: Must a claim be identified to a correct category of subject matter? Answer: It is not necessary to identify a single category into which a claim falls, so long as it is clear that the claim falls into at least one category. It is also not necessary to identify a “correct” category into which the claim falls, because although in many instances it is clear within which category a claimed invention falls, a claim may satisfy the requirements of more than one category. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP.… The post MPEP Q & A 170: Must a Claim be Identified to a Correct Category of Subject Matter? appeared first on Patent Education Series.

Question: Provide an example of a non-limiting claim that is not directed to any of the statutory categories. Answer: Examples of a non-limiting claim that is 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 per se (often referred to as “software per se”) when claimed as a product without any structural recitations; Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave;… The post MPEP Q & A 169: Non-Limiting Claims Not Directed to Any of the Statutory Categories. appeared first on Patent Education Series.

Question: A practitioner shall provide competent representation to a client. What does competent representation to a client entail? Answer: Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation. Chapter Details: The answer to this question can be found in the following supplement: Changes to Representation of Others Before the USPTO Final Rules. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.… The post MPEP Q & A 168: Competent Representation to a Client appeared first on Patent Education Series.

Question: Name one circumstance where applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application. Answer: Applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application if: applicant filed a nonpublication request in the U.S. application filed under 35 U.S.C. 111(a); applicant subsequently filed a foreign or international application directed to the invention disclosed in the U.S. application in a foreign country, or under a multilateral international agreement, that requires publication of applications 18 months after filing (foreign filing or counterpart application); and applicant did not rescind the… The post MPEP Q & A 167: When Must Applicants Timely File a Notice of Foreign Filing to Avoid Abandonment of a U.S. Application? appeared first on Patent Education Series.

Question: Name one item any further written opinion established by the International Preliminary Examining Authority should set forth. Answer: Any further written opinion established by the International Preliminary Examining Authority should set forth, as applicable: (A) Any defects in the international application concerning subject matter which is not required to be examined or which is unclear or inadequately supported; (B) Any negative findings with respect to any of the claims because of a lack of novelty, inventive step (non-obviousness) or industrial applicability; (C) Any defects in the form or contents of the international application; (D) Any finding by the examiner… The post MPEP Q & A 166: Further Written Opinion Established by the International Preliminary Examining Authority appeared first on Patent Education Series.

Question: List one consequence for when the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP). Answer: If the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP), it will result in the following consequences: Where there were no claims found patentable in the Office action, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) terminating prosecution and indicating the status of the claims as canceled. Where at least one claim is found patentable,… The post MPEP Q & A 165: When Patent Owner Fails to File Timely Response to Any Office Action Prior to an Action Closing Prosecution (ACP) appeared first on Patent Education Series.

Question: Would a computer-implemented method that is deemed novel and non-obvious be effected by the tax strategy provision even if used for a tax purpose? Answer: A computer-implemented method that is deemed novel and non-obvious would not be affected by this provision even if used for a tax purpose. For example, a novel and non-obvious computer-implemented method for manipulating data would not be affected by this provision even if the method organized data for a future tax filing. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability. The answer… The post MPEP Q & A 164: Computer-Implemented Methods and the Tax Strategy Provision appeared first on Patent Education Series.

Question: What are the most common basis for filing a reissue application? Answer: The most common bases for filing a reissue application are: the claims are too narrow or too broad; the disclosure contains inaccuracies; applicant failed to or incorrectly claimed foreign priority; and applicant failed to make reference to or incorrectly made reference to prior copending applications. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers correction of patents. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer… The post MPEP Q & A 163: What are the Most Common Basis for Filing a Reissue Application? appeared first on Patent Education Series.

Question: When is a 35 U.S.C. 102 rejection with multiple references proper? Answer: A 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to: Prove the primary reference contains an “enabled disclosure;” Explain the meaning of a term used in the primary reference; or Show that a characteristic not disclosed in the reference is inherent. 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 08.2017. Depending on future changes to the… The post MPEP Q & A 162: When is a 35 U.S.C. 102 Rejection with Multiple References Proper? appeared first on Patent Education Series.

Question: Is it true that living subject matter with markedly different characteristics from any found in nature, such as the claimed bacterium produced by genetic engineering, are excluded from patent protection by 35 U.S.C. 101? Answer: No, it is not true. For example, the Federal Circuit has indicated that “discoveries that possess ‘markedly different characteristics from any found in nature,’ … are eligible for patent protection.” 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 08.2017. Depending on future changes to the… The post MPEP Q & A 161: Living Subject Matter and Patent Protection appeared first on Patent Education Series.

Question: Can an Appellant request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection? Answer: No, an appellant cannot request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection. Chapter Details: The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers appeals. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in… The post MPEP Q & A 160: Rules for Appellant to Request to Reopen Prosecution appeared first on Patent Education Series.

Question: What are the two criteria for subject matter eligibility? Answer: First, the claimed invention must be in one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called “judicially recognized exceptions” or simply “exceptions”) are… The post MPEP Q & A 159: What are the Two Criteria for Subject Matter Eligibility? appeared first on Patent Education Series.

Question: Can maintenance fees be paid in cash? Answer: Maintenance fees may not be paid in cash. A maintenance fee may be paid: with Treasury notes with national bank notes with post office money orders with certified checks over the internet by electronic funds transfer (EFT), credit card, or deposit account payment methods Chapter Details: The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers maintenance fees. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable… The post MPEP Q & A 158: Can Maintenance Fees be Paid in Cash? 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 eight ways, namely by: reissue, the issuance of a certificate of correction which becomes a part of the patent, disclaimer, reexamination, supplemental examination, 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 correction of patents. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be… The post MPEP Q & A 157: Ways a Patent May be Corrected or Amended appeared first on Patent Education Series.

Question: What is the definition of fundamental economic practices? Answer: The courts have used the phrases “fundamental economic practices” or “fundamental economic concepts” to describe concepts relating to the economy and commerce, such as agreements between people in the form of contracts, legal obligations, and business relations. 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 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary:… The post MPEP Q & A 156: What is the Definition of Fundamental Economic Practices? appeared first on Patent Education Series.

Question: List two statutes that grounds for post-grant review may be raised for. Answer: 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 for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement. Chapter Details: The answer to this question can be found in the following supplement: Inter Partes, Post Grant, and Covered Business Method Review Final Rules. This is a special supplement that at the time of this… The post MPEP Q & A 155: Statutes That Grounds for Post-Grant Review May be Raised For appeared first on Patent Education Series.

Question: What does the broadest reasonable interpretation (BRI) do? Answer: The BRI sets the boundaries of the coverage sought by the claim and will influence whether the claim seeks to cover subject matter that is beyond the four statutory categories or encompasses subject matter that falls within the exceptions. 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 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.… The post MPEP Q & A 154: What Does the Broadest Reasonable Interpretation (BRI) Do? appeared first on Patent Education Series.

Question: When will a practitioner be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct? Answer: A practitioner shall be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct if: The practitioner orders or, with knowledge of the specific conduct, ratifies the conduct involved; or The practitioner is a partner or has comparable managerial authority in the law firm in which the other practitioner practices, or has direct supervisory authority over the other practitioner, and knows of the conduct at a time when its consequences can be avoided or mitigated but fails to take… The post MPEP Q & A 153: When Will a Practitioner be Responsible for Another Practitioner’s Violation of the USPTO Rules of Professional Conduct? appeared first on Patent Education Series.

Question: An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding. List 2 different types of information this may include. Answer: An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding; this information includes: Information used in the inventive process, such as: A copy of non-patent literature, A publication application, or A patent used in the inventive process The publication date of an undated document mentioned by the applicant which may qualify as a prior art… The post MPEP Q & A 152: Information an Attorney of Record May Have to Submit in Reply to an Office Action, Reissue Application, or Reexamination Proceeding appeared first on Patent Education Series.