Patent Bar MPEP Q Podcast

MPEP Q&A 290: Use of metric system of measurements in patent applications from 2023-12-05T15:15:26

Question: How should measurements be given within a patent application? Answer: In order to minimize the necessity in the future for converting dimensions given in the English system of measurem...

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MPEP Q&A 289: List two situations that are not considered new grounds of rejection? from 2023-11-21T15:15:13

Question: List two situations that are not considered new grounds of rejection? Answer: Where the statutory basis for the rejection remains the same, and the evidence relied upon in support of t...

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MPEP Q&A 288: How may an examiner treat an amendment not fully responsive to a non-final Office action? from 2023-11-07T15:15

Question: How may an examiner treat an amendment not fully responsive to a non-final Office action? Answer: An examiner may treat an amendment not fully responsive to a non-final Office action b...

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MPEP Q&A 287: When inconsistent information is given for an application data sheet, what submission will govern control? from 2023-10-24T14:15:47

Question: When inconsistent information is given for an application data sheet, what submission will govern control according to 37 CFR 1.76(d)(1)? Answer: 37 CFR 1.76(d)(1) provides that the mo...

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MPEP Q&A 286: What are the factual inquiries of obviousness enunciated by the Court? from 2023-10-10T14:15:33

Question: What are the factual inquiries of obviousness enunciated by the Court? Answer: Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated ...

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MPEP Q&A 285: What don’t the provisions of 37 CFR 1.114 apply to? from 2023-09-26T14:15:19

Question: What do the provisions of 37 CFR 1.114, request for continued examination, not apply to? Answer: The provisions of 27 CFR 1.114, Request for continued examination, do not apply to: (1)...

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MPEP Q&A 284: When will a provisional application be given a filing date? from 2023-09-12T14:15:04

Question: When will a provisional application be given a filing date? Answer: A provisional application filed on or after December 18, 2013 will be given a filing date as of the date a specifica...

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MPEP Q&A 283: List of special cases from 2023-08-29T14:15:50

Question: List at least 3 special cases (those which are advanced out of turn for examination). Answer: The following is a list of special cases (those which are advanced out of turn for examina...

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MPEP Q&A 282: Continued prosecution application practice for utility and plant applications from 2023-08-15T14:15:36

Question: Since CPA applications were eliminated for utility and plant applications, what should applicants who wish to continue examination of the same claimed invention after the prosecution o...

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MPEP Q&A 281: Time for reply to final rejection from 2023-08-01T14:15:23

Question: What is the time for reply to a final rejection? Answer: The time for reply to a final rejection is as follows: (A) All final rejections setting a 3-month shortened statutory period (S...

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MPEP Q&A 280: When does the revocation of a filing receipt license become effective? from 2023-07-18T14:15:09

Question: When does the revocation of a filing receipt license become effective? Answer: The revocation becomes effective on the date on which the notice is mailed. Chapter Details: The answer t...

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MPEP Q&A 279: Methods of paying a maintenance fee and necessary surcharges from 2023-07-04T14:15:56

Question: How can a maintenance fee and any necessary surcharge be made? Answer: The method of payment for the maintenance fee and any necessary surcharge shall be made in U.S. dollars and in th...

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MPEP Q&A 278: Claiming the benefit of a provisional application from 2023-06-20T14:15:42

Question: What does a petition under 37 CFR 1.78(b) require? Answer: A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e)and 37 CFR 1.78 to the prior-filed pr...

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MPEP Q&A 277: Exceptions to extensions of time from 2023-06-06T14:15:27

Question: 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee up to 5 months after the end of the time period set to take action except during which circumsta...

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MPEP Q&A 276: Examples of exemplary rationales of a prima facie case of obviousness from 2023-05-23T14:15:14

Question: What are some examples of rationales that may support a conclusion of obviousness? Answer: Examples of rationales that may support a conclusion of obviousness include: (A) Combining pr...

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MPEP Q&A 275: Receipt of drawing after the filing date from 2023-05-09T14:15

Question: What actions should happen if an examiner discovers new matter in a substitute or additional drawing? Answer: If the examiner discovers new matter in a substitute or additional drawing...

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MPEP Q&A 274: Inspection of patent files by the public from 2023-04-25T14:32:53

Question: During what conditions would the complete file wrapper and contents of a patent application published in redacted form not be available? Answer: If an application was published in reda...

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MPEP Q&A 273: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee? from 2023-04-11T14:15:34

Question: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee? Answer: Yes, requests for ex parte reexamination filed on or after Janua...

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MPEP Q&A 272: Limitation that the courts have found not to be enough to qualify as“significantly more”when recited in a claim with a judicial exception. from 2023-03-28T14:15:22

Question: Name a limitation that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception. Answer: Limitations that...

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MPEP Q&A 271: What are three pieces of information each patent listed in the Official Gazette may give? from 2023-03-14T14:15:09

Question: What are three pieces of information each patent listed in the Official Gazette may give? Answer: As to each patent listed in the Official Gazette, the following information may be giv...

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MPEP Q&A 270: Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for? from 2023-02-28T15:15:55

Question: Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for? Answer: Once appellant has filed a notice of appeal, appell...

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MPEP Q&A 269: Two laboratory techniques the courts have recognized as well-understood, routine, conventional activities in the life science arts from 2023-02-14T15:15:43

Question: List two laboratory techniques the courts have recognized as well-understood, routine, conventional activities in the life science arts when they are claimed in a merely generic manner...

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MPEP Q&A 268: What should the examiner do? from 2023-01-31T15:15:57

Question: If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appea...

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MPEP Q&A 267: What are the four purposes 35 U.S.C. 101 has been interpreted as imposing? from 2023-01-17T15:15:42

Question: What are the four purposes 35 U.S.C. 101 has been interpreted as imposing? Answer: 35 U.S.C. 101 has been interpreted as imposing four purposes. First, 35 U.S.C. 101 limits an inventor...

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MPEP Q&A 266: Name one advantage a CPA has compared to a continuation or divisional application from 2023-01-03T15:15:28

Question: Name one advantage a CPA has compared to a continuation or divisional application filed under 37 CFR 1.53(b). Answer: A CPA has a number of advantages compared to a continuation or div...

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MPEP Q&A 265: What is the second part of the Alice/Mayo test often referred to as? from 2022-12-20T15:15:15

Question: What is the second part of the Alice/Mayo test often referred to as? Answer: The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. An invent...

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MPEP Q&A 264: How do examiners evaluate integration into a practical application? from 2022-12-06T15:15:03

Question: How do examiners evaluate integration into a practical application? Answer: Examiners evaluate integration into a practical application by: (1) identifying whether there are any additi...

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MPEP Q&A 263: How is the markedly different characteristics analysis performed? from 2022-11-22T15:15:50

Question: How is the markedly different characteristics analysis performed? Answer: The markedly different characteristics analysis compares the nature-based product limitation to its naturally ...

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MPEP Q&A 262: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind. from 2022-11-08T15:28:32

Question: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind. Answer: Examples of claims that do not recite mental proc...

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MPEP Q&A 261: What is meant by a fundamental economic practice or principle? from 2022-10-25T14:15:18

Question: What is meant by a fundamental economic practice or principle? Answer: The courts have used the phrases “fundamental economic practices” or “fundamental economic prin...

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MPEP Q&A 257: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time? from 2022-08-30T14:15:24

Question: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time? Answer: The inventive entity for a particular application is based on so...

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MPEP Q&A 256: What type of applications and proceedings may submit drawings that are not black and white line drawings via EFS-Web? from 2022-08-16T14:15:12

Question: What type of applications and proceedings may submit photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings via EFS-Web? Answer:...

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MPEP Q&A 255: When do members of a Markush group share a ‘single structural similarity’? from 2022-08-02T14:15:59

Question: When do members of a Markush group share a ‘single structural similarity’? Answer: Members of a Markush group share a “single structural similarity” when they belong to the same recogn...

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MPEP Q&A 254: What must a statement under 37 CFR 1.97(e) state? from 2022-07-19T14:15:18

Question: What must a statement under 37 CFR 1.97(e) state? Answer: A statement under 37 CFR 1.97(e) must state either; that each item of information contained in the information disclosure stat...

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MPEP Q&A 253: What must a claim in dependent form contain? from 2022-07-05T14:15:05

Question: What must a claim in dependent form contain? Answer: A claim in dependent form shall contain: (i) a reference to a claim previously set forth, and (ii) then specify a further limitatio...

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MPEP Q&A 252: When the online fee payment in EFS-Web is unavailable, what types of submissions cannot be filed via EFS-Web? from 2022-06-21T14:15:47

Question: When the online fee payment in EFS-Web is unavailable, what types of submissions cannot be filed via EFS-Web, since online fee payment must accompany the submission? Answer: When the o...

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MPEP Q&A 251: Benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) from 2022-06-07T14:15:29

Question: What are the benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) rather than requesting conver...

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MPEP Q&A 250: What are examples of situations where ownership must be established? from 2022-05-24T14:24:15

Question: What are examples of situations where ownership must be established? Answer: Examples of situations where ownership must be established are when the assignee who is not the applicant: ...

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MPEP Q&A 249: What happens if a claim for foreign priority is presented after the time period set in 37 CFR 1.55? from 2022-05-10T14:08

Question: What happens if a claim for foreign priority is presented after the time period set in 37 CFR 1.55? Answer: If a claim for foreign priority is presented after the time period set in 37...

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MPEP Q&A 248: What are the enumerated groupings of abstract ideas defined as? from 2022-04-26T14:23:34

Question: What are the enumerated groupings of abstract ideas defined as? Answer: The enumerated groupings of abstract ideas are defined as: 1) Mathematical concepts – mathematical relationships...

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MPEP Q&A 247: When is a protest considered timely? from 2022-04-12T14:23:14

Question: When is a protest considered timely? Answer: A protest is timely if (1) filed prior to the date the application was published under 37 CFR 1.211 or the date a notice of allowance was g...

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MPEP Q&A 246: Will the paper application file itself be available to the public for inspection? from 2022-03-29T14:23

Question: If a published patent application is pending and it is not maintained in the IFW system, will the paper application file itself be available to the public for inspection? Answer: Publi...

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MPEP Q&A 245: How is the effective filing date of a claimed invention determined? from 2022-03-15T14:16:40

Question: How is the effective filing date of a claimed invention determined? Answer: The effective filing date of a claimed invention is determined on a claim-by-claim basis. Chapter Details: T...

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MPEP Q&A 244: How can correspondence filed via the Office electronic filing system be signed? from 2022-03-01T15:15:27

Question: How can correspondence filed via the Office electronic filing system be signed? Answer: Correspondence filed via the Office electronic filing system may be signed by a graphic represen...

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MPEP Q&A 243: Who may sign the substitute statement for a juristic entity? from 2022-02-15T15:15:10

Question: Who may the substitute statement be signed by for a juristic entity? Answer: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and C...

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MPEP Q&A 242: When will an international application not need a foreign filing license? from 2022-02-01T15:15:53

Question: List two reasons why an international application filed with, or forwarded to, the International Bureau would not need a foreign filing license. Answer: An international application fi...

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MPEP Q&A 241: Paying maintenance fee due prior to the issuance of a reissue patent from 2022-01-18T15:15:35

Question: If the maintenance fee is due prior to the issuance of a reissue patent, what will paying the maintenance fee maintain? Answer: If the maintenance fee is due prior to the issuance of a...

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MPEP Q&A 240: What is an example of a situation that does not define ‘substantial utilities’? from 2022-01-04T15:15:16

Question: What is an example of a situation that does not define “substantial utilities”: Answer: The following are examples of situations that do not define “substantial utilities”: (A) Basic r...

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MPEP Q&A 239: Can a patent owner avoid double patenting by disclaiming the earlier patent? from 2021-12-21T15:15:58

Question: Can a patent owner avoid double patenting by disclaiming the earlier patent? Answer: “[A] patent owner cannot avoid double patenting by disclaiming the earlier patent.” Cha...

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MPEP Q&A 238: What are examples of laws of nature or natural phenomena? from 2021-12-07T15:15:30

Question: List two concepts and products the courts have identified as examples of laws of nature or natural phenomena. Answer: The courts have identified the following concepts and products as ...

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MPEP Q&A 237: What is an example of non-limiting claims not directed to statutory categories? from 2021-11-23T15:15:11

Question: Name one example of non-limiting claims not directed to any of the statutory categories. Answer: Non-limiting examples of claims that are not directed to any of the statutory categorie...

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MPEP Q&A 236: Who is the applicant for a patent? from 2021-11-09T15:15:54

Question: Who is the applicant for a patent? Answer: The applicant for patent is all parties identified as the applicant under 37 CFR 1.42(a). Where the applicant is all of the joint inventors u...

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MPEP Q&A 235: What is a mathematical relationship? from 2021-10-26T14:15:37

Question: What is a mathematical relationship? Answer: A mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words or using ...

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MPEP Q&A 234: How can patent applications be sent to the USPTO? from 2021-10-12T14:15:19

Question: How can patent applications be sent to the U.S. Patent and Trademark Office? Answer: All applications (provisional and nonprovisional) may be sent to the U.S. Patent and Trademark Offi...

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MPEP Q&A 233: List application filing dates for determining whether patent is subject to maintenance fees from 2021-09-28T14:15:01

Question: What are the application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees? Answer: Application filing dates for purposes of determini...

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MPEP Q&A 232: Can social media websites be a source of prior art? from 2021-09-14T14:15:44

Question: Can social media websites like Facebook be a source of prior art? Answer: Social media websites on the Internet, such as YouTube, Twitter, Facebook, and public forum posts, can be a so...

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MPEP Q&A 231: Types of papers that may be filed and processed electronically from 2021-08-31T14:15:23

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 Wit...

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MPEP Q&A 230: What is an ‘improper Markush grouping’? from 2021-08-17T14:15:03

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...

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MPEP Q&A 229: When are the claims of a new application finally rejected in the first Office action? from 2021-08-03T14:15:44

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 t...

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MPEP Q&A 228: Who is listed on the assignee section of a patent? from 2021-07-20T14:48:20

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 desi...

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MPEP Q&A 227: What are the requirements for request for a corrected publication? from 2021-07-06T14:13:03

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 f...

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MPEP Q&A 226: When is a rejection on the ground of lack of utility appropriate? from 2021-06-22T14:12:43

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 “use...

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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. from 2021-06-08T14:12:27

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...

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MPEP Q&A 224: What are the“Appropriate circumstances”to vacate the order granting reexamination? from 2021-05-25T14:12:10

Question: What are the “Appropriate circumstances” to vacate the order granting reexamination? Answer: “Appropriate circumstances” exist to vacate the order granting reex...

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MPEP Q&A 223: What Size Non-Patent Documents Require Document Size Fees? from 2021-05-11T14:11:47

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 havi...

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MPEP Q&A 222: What are the Three Conditions That Must be Satisfied …? from 2021-04-27T14:11:32

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 t...

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MPEP Q&A 221: What are the Three Types of Patent Documents Available as Prior Art …? from 2021-04-13T14:11:13

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 ...

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MPEP Q&A 220: What are the Section 42.208 paragraph (c) Amendments? from 2021-03-30T14:10:54

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...

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MPEP Q&A 219: When may the OPAP object to and require corrected drawings within a set time period? from 2021-03-16T14:10:39

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 draw...

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MPEP Q&A 218: What is the issue of correlation about as related to matters of invitro/in vivo? from 2021-03-02T15:10:21

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 Patentabili...

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MPEP Q&A 217: What are the Section 42.23 paragraph (b) Amendments? from 2021-02-16T15:09:59

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....

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MPEP Q&A 216: Time for Establishing ISR and WO of the International Search Authority from 2021-02-02T15:03:04

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 appli...

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MPEP Q&A 215: When Did Amendments to the Rules of Practice for Trials Before PTAB Take Effect? from 2021-01-19T15:03:48

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 t...

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MPEP Q&A 214: What are Sufficient Grounds for Post-Grant Review? from 2021-01-05T15:03:33

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 C...

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MPEP Q&A 213: Can Attorney Arguments Take the Place of Evidence? from 2020-12-22T15:03:58

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 e...

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MPEP Q&A 212: What is the Number of Days Before an Oral Argument for Exchange of Exhibits? from 2020-12-08T15:03:38

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 exchan...

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MPEP Q&A 211: When May an Abandoned Application be Used as Prior Art? from 2020-11-24T15:03:39

Question: When may an abandoned application be used as prior art? Answer: An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for ...

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MPEP Q&A 210: What is the Executive Summary of the Supplement ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board? from 2020-11-10T15:03:30

Question: What is the executive summary of the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’? Answer: This final rule amends the existing c...

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MPEP Q&A 209: Submission of an Oath or Declaration From a Prior Application from 2020-10-27T14:02:25

Question: Does a copy of an oath or declaration from a prior application need to be submitted with a continuation or divisional application, or with a continuation-in-part application filed on o...

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MPEP Q&A 208: Filing a Petition to Make an Application Special Without a Fee from 2020-10-13T14:02:08

Question: Is it possible to file a petition to make an application special without a fee? Answer: A petition to make an application special may be filed without a fee if the basis for the petiti...

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MPEP Q&A 207: When Can a Practitioner Enter a Business Transaction with a Client from 2020-09-29T14:02:50

Question: When can a practitioner enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client? Answer:...

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MPEP Q&A 206: Requirements for an Applicant to Rescind Nonpublication Requests from 2020-09-15T14:02:34

Question: What are the requirements for an applicant to rescind a nonpublication request? Answer: The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublic...

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MPEP Q&A 205: Meaning of Claims Limited to Species from 2020-09-01T14:02:16

Question: What is the meaning of claims limited to species? Answer: Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited...

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MPEP Q&A 204: Definition of a National Application from 2020-08-18T14:02:57

Question: What is the definition of a national application as described in chapter 200 of the MPEP? Answer: A national application as used in this chapter means either a U.S. application for pat...

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MPEP Q&A 203: Rejections of Dependent Claims Not Specifying a Further Limitation from 2020-08-04T14:02:40

Question: Should a dependent claim that does not specify a further limitation of the subject matter claimed be rejected under 35 USC 112(d)? Answer: Yes, a dependent claim that does not specify ...

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MPEP Q&A 202: Components of Examiner’s Answer in an Appeal from 2020-07-21T14:02:19

Question: What should an examiner’s answer in an appeal include? Answer: An examiner’s answer should include, under appropriate headings, in the order indicated, the following items: (1) Grounds...

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MPEP Q&A 201: Drawings Essential Elements of Design Patent Applications from 2020-07-07T14:02:49

Question: Is a drawing an essential element of a design patent application? Answer: Every design patent application must include either a drawing or a photograph of the claimed design. As the dr...

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MPEP Q&A 200: When Drawings Are Not Considered Necessary Under 35 USC 113 from 2020-06-23T14:02:33

Question: When is a drawing usually not considered necessary for the understanding of an invention under 35 USC 113 (first sentence)? Answer: It has been USPTO practice to treat an application t...

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MPEP Q&A 199: The Difference Between Applicant Information, Correspondence Information, and Application Information from 2020-06-09T14:02:14

Question: What is the difference between applicant information, correspondence information, and application information? Answer: Applicant information includes the name, residence, mailing addre...

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MPEP Q&A 198: Items Necessary to Accord the International Filing Date the Date of Receipt of the International Application from 2020-05-26T14:02:56

Question: What does the Office need at the time of receipt in order to accord the international filing date the date of receipt of the international application? Answer: The receiving Office sha...

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MPEP Q&A 197: What Must a Petition for an Unintentionally Delayed Claim be Filed With? from 2020-05-12T14:02:38

Question: What must a petition for an unintentionally delayed claim be filed with? Answer: A petition for an unintentionally delayed claim must be accompanied by: (A) the reference required by 3...

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MPEP Q&A 196: Submission of Petition to Withdraw Application from Issue Under 37 CFR 1.313(c) from 2020-04-28T14:02:18

Question: How can petitions to withdraw an application from issue under 37 CFR 1.313(c) be sent to the USPTO? Answer: Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be...

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MPEP Q&A 195: Necessary Items for a Petition for Retroactive License from 2020-04-14T14:02:57

Question: What should a petition for retroactive license include? Answer: A petition for retroactive license shall include: (1) A listing of each of the foreign countries in which the unlicensed...

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MPEP Q&A 194: Stop the Publication of an Application from 2020-03-31T14:02:26

Question: Can a petition under 37 CFR 1.138(c) stop publication of an application? Answer: A petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized a...

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MPEP Q&A 193: Petition to Make Special and Energy Resources from 2020-03-17T14:02:27

Question: Does the petition to make special apply to patent applications for inventions dealing with energy resources? Answer: The U.S. Patent and Trademark Office will, on petition, accord “spe...

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MPEP Q&A 192: Overcome Provisional Obviousness Rejection from 2020-03-03T15:02:07

Question: How can a provisional obviousness rejection be overcome? Answer: A provisional obviousness rejection can be overcome by: Arguing patentability over the earlier filed application; Combi...

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MPEP Q&A 191: Final Rule in the Changes to the Claim Construction Standard from 2020-02-18T15:02:23

Question: What does the final rule in the “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” state? An...

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MPEP Q&A 190: AIA Proceeding Expenses Under Phillips from 2020-02-04T15:02:51

Question: Have parties to AIA proceedings under Phillips required expanded page limits or otherwise incurred more expenses in their AIA trials than parties in AIA proceedings under BRI? Answer: ...

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MPEP Q&A 189: Issuance of NIRC Action in Inter Partes Reexamination Proceeding from 2020-01-21T15:02:14

Question: Name one instance when issuance of a NIRC action would be proper in an inter partes reexamination proceeding. Answer: The following are the only instances when issuance of a NIRC actio...

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MPEP Q&A 188: What Should Applicant Initiated Interview Request Form Identify? from 2020-01-07T15:02:40

Question: What should the Applicant Initiated Interview Request form identify? Answer: The Applicant Initiated Interview Request form should identify: the participants of the interview the propo...

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MPEP Q&A 187: Two Final Rules Dealing with Claim Construction Standard from 2019-12-10T15:02:08

Question: What are the two final rules dealing with the claim construction standard as implemented in the supplement entitled “Changes to the Claim Construction Standard for Interpreting C...

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MPEP Q&A 186: Name Types of Patents that May Not Use 37 C.F.R. 1.114 from 2019-11-26T15:02:36

Question: Name two types of patents that may not use the provisions of 37 C.F.R. 1.114. Answer: The provisions of 37 C.F.R. 1.114 do not apply to the following types of patents: design patent ap...

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MPEP Q&A 185: What Must an Application Filed Under 37 CFR 1.53(d) be Filed Before the Earliest Of? from 2019-11-12T15:02:55

Question: What must an application filed under 37 CFR 1.53(d) be filed before the earliest of? Answer: An application filed under 37 CFR 1.53(d) must be filed before the earliest of: (A) payment...

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MPEP Q&A 184: What Should a Subject Matter Eligibility Rejection Identify Under Step 2A? from 2019-10-29T14:02:24

Question: A subject matter eligibility rejection under Step 2 should provide an explanation for each part of the Step 2 analysis; Step 2A and Step 2B. What specifically should a rejection identi...

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MPEP Q&A 183: When Changes to the Claim Construction Standard Apply from 2019-10-15T14:03:50

Question: When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent...

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MPEP Q&A 182: Characteristics of Ex Parte Reexamination from 2019-10-01T14:02:05

Question: List one of the basic characteristics of ex parte reexamination. Answer: The basic characteristics of ex parte reexamination are as follows: Anyone can request reexamination at any tim...

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MPEP Q&A 181: Summary of Claim Construction Standard from 2019-09-17T14:02:30

Question: What is the executive summary of the final rule when dealing with the claim construction standard that took effect on November 13, 2018? Answer: This final rule revises the rules for I...

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MPEP Q&A 180: AIA 35 U.S.C. 102(b) from 2019-09-03T14:02:41

Question: What does AIA 35 U.S.C. 102(b) discuss? Answer: AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a). Chapter Details: The answer to this questio...

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MPEP Q&A 179: What is the 3-Step Test for Recapture? from 2019-08-20T14:02:58

Question: What is the 3-step test for recapture? Answer: The three-step test for recapture is: First, we determine whether, and in what respect, the reissue claims are broader in scope than the ...

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MPEP Q&A 178: What is the Difference Between Derivation and Priority of Invention? from 2019-08-06T14:02:43

Question: What is the difference between derivation and priority of invention? Answer: Derivation and priority of invention both focus on inventorship. Derivation addresses originality, i.e., w...

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MPEP Q&A 177: Revealing Information Relating to the Representation of a Client When the Client has Not Given Informed Consent from 2019-07-23T14:02:27

Question: Can a patent practitioner ever reveal information relating to the representation of a client when the client has not given informed consent? Answer: Yes, a practitioner may reveal info...

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MPEP Q&A 176: What Does a Petition Under 37 C.F.R. 1.78 Require? from 2019-07-09T14:02:11

Question: What does a petition under 37 C.F.R. 1.78 require? Answer: A petition under 37 CFR 1.78(b) requires: the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provi...

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MPEP Q&A 175: Concepts Related to Tracking or Organizing Information from 2019-06-25T14:01:56

Question: List a concept related to tracking or organizing information. Answer: Examples of concepts related to tracking or organizing information include; i. classifying and storing digital ima...

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MPEP Q&A 174: Submission Types that May Not be Filed Via EFS Web. from 2019-06-11T14:01:41

Question: List 2 submission types that may not be filed via EFS Web. Answer: The following is a list of submission types that are not permitted to be filed using EFS-Web: Plant patent applicatio...

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MPEP Q&A 173: What is a Complete Nonprovisional Application Comprised of? from 2019-05-28T14:01:26

Question: What is a complete nonprovisional application comprised of? Answer: A complete nonprovisional application comprises the following: a specification, including claims, drawings, an oath ...

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MPEP Q&A 172: Fees that Must be Paid Upon Filing a Request for Prioritized Examination from 2019-05-14T14:01:09

Question: Name two fees that must be paid upon filing a request for prioritized examination. Answer: Upon filing the request for prioritized examination, the following fees must be paid for the ...

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MPEP Q&A 171: Instances Where Publication or Issue Date is Later Than the Current Date from 2019-04-30T14:02:52

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 ...

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MPEP Q&A 170: Must a Claim be Identified to a Correct Category of Subject Matter? from 2019-04-16T14:02:12

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 ...

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MPEP Q&A 169: Non-Limiting Claims Not Directed to Any of the Statutory Categories. from 2019-04-02T14:02:56

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 statutor...

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MPEP Q&A 168: Competent Representation to a Client from 2019-03-19T14:02:40

Question: A practitioner shall provide competent representation to a client. What does competent representation to a client entail? Answer: Competent representation requires the legal, scientifi...

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MPEP Q&A 167: When Must Applicants Timely File a Notice of Foreign Filing to Avoid Abandonment of a U.S. Application? from 2019-03-05T15:02:25

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 f...

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MPEP Q&A 166: Further Written Opinion Established by the International Preliminary Examining Authority from 2019-02-19T15:02:11

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 Inte...

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MPEP Q&A 165: When Patent Owner Fails to File Timely Response to Any Office Action Prior to an Action Closing Prosecution (ACP) from 2019-02-05T15:02:57

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 f...

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MPEP Q&A 164: Computer-Implemented Methods and the Tax Strategy Provision from 2019-01-22T15:02:40

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...

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MPEP Q&A 163: What are the Most Common Basis for Filing a Reissue Application? from 2019-01-08T15:02:21

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 disclos...

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MPEP Q&A 162: When is a 35 U.S.C. 102 Rejection with Multiple References Proper? from 2018-12-21T15:01

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 c...

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MPEP Q&A 161: Living Subject Matter and Patent Protection from 2018-12-11T15:01:52

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...

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MPEP Q&A 160: Rules for Appellant to Request to Reopen Prosecution from 2018-11-27T15:02:48

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 reque...

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MPEP Q&A 159: What are the Two Criteria for Subject Matter Eligibility? from 2018-11-13T15:02:34

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 categorie...

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MPEP Q&A 158: Can Maintenance Fees be Paid in Cash? from 2018-10-30T14:02:20

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 mon...

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MPEP Q&A 157: Ways a Patent May be Corrected or Amended from 2018-10-16T14:02:03

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 be...

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MPEP Q&A 156: What is the Definition of Fundamental Economic Practices? from 2018-10-02T14:01:29

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 conce...

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MPEP Q&A 155: Statutes That Grounds for Post-Grant Review May be Raised For from 2018-09-18T14:01:13

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 ...

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MPEP Q&A 154: What Does the Broadest Reasonable Interpretation (BRI) Do? from 2018-09-04T13:46:54

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 s...

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MPEP Q&A 153: When Will a Practitioner be Responsible for Another Practitioner’s Violation of the USPTO Rules of Professional Conduct? from 2018-08-21T14:00

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 p...

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MPEP Q&A 152: Information an Attorney of Record May Have to Submit in Reply to an Office Action, Reissue Application, or Reexamination Proceeding from 2018-08-07T14:00:54

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 ...

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MPEP Q&A 151: Situations Where a Practitioner May Withdraw From Representing a Client According to 37 C.F.R. 11.116 from 2018-07-24T14:00:40

Question: List two situations where a practitioner may withdraw from representing a client according to 37 C.F.R. 11.116. Answer: A practitioner may withdraw from representing a client if: Withd...

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MPEP Q&A 150: Triggering of On-Sale Bar of Pre-AIA 35 U.S.C. 102(b) from 2018-07-10T14:00:26

Question: When is the on-sale bar of pre-AIA 35 U.S.C. 102(b) triggered? Answer: The on-sale bar of pre-AIA 35 U.S.C. 102(b) is triggered if the invention is both: The subject of a commercial of...

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MPEP Q&A 149: Four Categories of Invention Recited in 35 U.S.C. 101 from 2018-07-03T14:00:52

Question: What are the 4 categories of invention recited in 35 U.S.C. 101? Answer: The four categories of invention recited in 35 U.S.C. 101 are: process, machine, manufacture, or composition of...

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MPEP Q&A 148: The Duty of Disclosure in Reexamination Proceedings from 2018-06-26T14:00:38

Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agen...

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MPEP Q&A 147: Post-Grant Reviews and Civil Actions from 2018-06-19T14:00:13

Question: Can a post-grant review be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party-in-interest filed a civil action challenging th...

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MPEP Q&A 146: When Can a Combination as Claimed Show that Inventions are Distinct? from 2018-06-12T14:00

Question: When can a combination as claimed show that inventions are distinct? Answer: Inventions are distinct if it can be shown that a combination as claimed: (A) does not require the particul...

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MPEP Q&A 145: Methods For Paying a Maintenance Fee from 2018-06-05T14:00:07

Question: How can a maintenance fee be paid? Answer: A maintenance fee may be paid: with cash with Treasury notes with national bank notes with post office money orders with certified checks ove...

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MPEP Q&A 144: What Should a Subject Matter Eligibility Rejection Under Step 2 Do? from 2018-05-29T14:00:52

Question: What should a subject matter eligibility rejection under Step 2 do? Answer: A subject matter eligibility rejection under Step 2 should: Identify the judicial exception by referring to ...

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MPEP Q&A 143: Who Decides Petitions for Derivation and Conducts Any Ensuing Derivation Proceeding? from 2018-05-22T14:00:39

Question: Who decides petitions for derivation and conducts any ensuing derivation proceeding? Answer: The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensu...

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MPEP Q&A 142: Examples of Evidence Under 37 C.F.R. 1.131(a) from 2018-05-15T14:00:23

Question: List 2 examples of evidence under 37 C.F.R. 1.131(a). Answer: The allegations of fact might be supported by submitting as evidence one or more of the following: (A) attached sketches; ...

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MPEP Q&A 141: Issues That Must be Completed During the Examination Before an Interference May be Called from 2018-05-08T14:00:07

Question: What are the three major issues that must be completed during the examination before an interference may be called? Answer: The three major issues that must be completed during the exa...

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MPEP Q&A 140: Status Identifiers Expected to Follow the Claim Number in an Amendment to the Claims from 2018-05-01T14:00:06

Question: List two status identifiers that are expected to follow the claim number in an amendment to the claims. Answer: Status is indicated in a parenthetical expression following the claim nu...

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MPEP Q&A 139: Fees the Office Might Refund from 2018-04-24T14:00:44

Question: What fees might the Office refund? Answer: The Office may refund: A fee paid by mistake (e.g., fee paid when no fee is required); or Any fee paid in excess of the amount of fee that is...

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MPEP Q&A 138: When May a Process and Apparatus for its Practice be Shown to be Distinct Inventions? from 2018-04-17T14:00:30

Question: When may a process and apparatus for its practice be shown to be distinct inventions? Answer: Process and apparatus for its practice can be shown to be distinct inventions, if either o...

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MPEP Q&A 137: Who May a Party Dissatisfied with a Final Decision in a Derivation Proceeding Appeal To? from 2018-04-10T14:00:16

Question: Who may a party dissatisfied with a final decision in a derivation proceeding appeal to? Answer: A party dissatisfied with a final decision in a derivation proceeding may appeal to dis...

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MPEP Q&A 136: What a Reasons Document Should Include from 2018-04-03T14:00:03

Question: The reasons document explains why each item of information does or does not raise a substantial new question of patentability (or SNQ) in a supplemental examination. What should a reas...

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MPEP Q&A 135: When May the Prior Art Date of a Reference Under Pre-AIA 35 U.S.C. 102(e) be the International Filing Date? from 2018-03-27T14:00:49

Question: When may the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) be the international filing date? Answer: The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may...

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MPEP Q&A 134: Who is Barred From Filing a Request for Ex Parte Reexamination of a Patent? from 2018-03-20T14:00:36

Question: Who is barred from filing a request for ex parte reexamination of a patent? Answer: “Any person” may file a request for ex parte reexamination of a patent, unless prohibited by AIA 35 ...

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MPEP Q&A 133: Correspondence That May be Transmitted by Facsimile. from 2018-03-13T14:00:17

Question: Name two types of correspondence that may be transmitted by facsimile. Answer: Types of correspondence which may be transmitted by facsimile include: CPAs (available for design applica...

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MPEP Q&A 132: What are the Three Separate and Distinct Requirements of the First Paragraph of 35 U.S.C. 112? from 2018-03-06T15:00:01

Question: What are the three separate and distinct requirements of the first paragraph of 35 U.S.C. 112? Answer: 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph require that the spec...

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MPEP Q&A 131: What Does an Applicant Who Uses the Patent Cooperation Treaty Gain the Benefit of? from 2018-02-27T15:00:26

Question: What does an applicant who uses the Patent Cooperation Treaty gain the benefit of? Answer: An applicant who uses the Patent Cooperation Treaty gains the benefit of: (A) a delay in the ...

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MPEP Q&A 130: What is a Covered Business Method Patent According to the AIA? from 2018-02-20T15:00:48

Question: What is a covered business method patent according to the AIA? Answer: The AIA specifies that a covered business method patent is a patent that claims a method or corresponding apparat...

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MPEP Q&A 129: How Applicants Can Rebut a Prima Facie Case of Obviousness Based on Overlapping Ranges? from 2018-02-13T15:00:35

Question: How can applicants rebut a prima facie case of obviousness based on overlapping ranges? Answer: Applicants can rebut a prima facie case of obviousness based on overlapping ranges by sh...

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MPEP Q&A 128: Individuals Who May Sign the Power of Attorney for Applications Filed On or After September 16, 2012 from 2018-02-06T15:00:20

Question: Who must sign the power of attorney for applications filed on or after September 16, 2012? Answer: For applications filed on or after September 16, 2012, a power of attorney must be si...

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MPEP Q&A 127: What Must a Statement Under 37 CFR 1.97(e) State? from 2018-01-30T15:00:03

Question: What must a statement under 37 CFR 1.97(e) state? Answer: A statement under 37 CFR 1.97(e) must state either: That each item of information contained in the information disclosure stat...

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MPEP Q&A 126: Time When a Third Party Submission Must be Made from 2018-01-23T15:00:46

Question: When must a third party submission be made? Answer: A third-party submission must be filed prior to the earlier of: The date a notice of allowance is given or mailed in the application...

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MPEP Q&A 125: Reasons Why a Petition Filed Under 35 U.S.C. 321 May be Considered from 2018-01-16T15:00:28

Question: 35 U.S.C. 322 covers petitions involved in post-grant reviews. 35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered. List two reasons why a petition fi...

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MPEP Q&A 124: Situations Where the Examiner is Not Responsible for Examining the Sufficiency of the Showing from 2018-01-09T15:00:14

Question: In what two situations is the examiner not responsible for examining the sufficiency of the showing? Answer: The examiner is not responsible for examining the sufficiency of the showin...

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MPEP Q&A 123: What Situation May a Certificate of Correction be Used In Order to Correct an Issued Patent as Long as the Filing Was Made Without Deceptive Intent? from 2018-01-02T15:00

Question: A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in what situations? Answer: A Certificate of correc...

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MPEP Q&A 122: Advantages of Filing a CPA Compared to a Continuation or Divisional Application from 2017-12-26T15:00:46

Question: List an advantage of filing a CPA compared to a continuation or divisional application. Answer: The following list includes advantages of filing a CPA compared to a continuation or div...

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MPEP Q&A 121: Times When a Request for Continuing Examination May be Proper from 2017-12-19T15:00:32

Question: List 2 times when a request for continuing examination may be proper. Answer: A request for continued examination may be proper when: An Office action is a final rejection. A Notice of...

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MPEP Q&A 120: What May an Applicant do in Response to a Rejection Based on Failure to Claim Patent-Eligible Subject Matter? from 2017-12-12T15:00:18

Question: What may an applicant do in response to a rejection based on failure to claim patent-eligible subject matter? Answer: In response to a rejection based on failure to claim patent-eligib...

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MPEP Q&A 119: When is a Reference Analogous Art to the Claimed Invention? from 2017-12-05T15:00:12

Question: When is a reference analogous art to the claimed invention? Answer: A reference is analogous art to the claimed invention if: The reference is from the same field of endeavor as the cl...

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MPEP Q&A 118: Item an Appellant Must File If He or She Wishes to Reinstate an Appeal After Prosecution is Reopened from 2017-11-28T15:00:58

Question: What must an appellant file if he or she wishes to reinstate an appeal after prosecution is reopened? Answer: If an appellant wishes to reinstate an appeal after prosecution is reopene...

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MPEP Q&A 117: Items a‘Corrective Document’Must Include? from 2017-11-21T15:00:44

Question: An error in a recorded assignment document will be corrected by the Assignment Division provided a “corrective document” is submitted. What items must the “corrective document” include...

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MPEP Q&A 116: Consequence That May Result Where Patent Owner Fails to Make Timely Appeal After the Issuance of a Right of Appeal Notice from 2017-11-14T15:00:31

Question: What is one consequence that may result where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is ...

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MPEP Q&A 115: What is the Order of Arrangement for the Specification? from 2017-11-07T15:00:17

Question: What is the order of arrangement for the specification? Answer: The following order of arrangement is preferable in framing the specification. (A) Title of the invention. (B) Cross-ref...

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MPEP Q&A 114: Individuals Who May Grant Written Authority to Status Information from 2017-10-31T14:00:04

Question: Name 2 individuals who may grant written authority to status information in a non-published, pending or abandoned application. Answer: A non-published, pending or abandoned application...

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MPEP Q&A 113: List 2 Requirements of the Summary of Abstract from 2017-10-24T14:00:50

Question: List 2 requirements of the summary of abstract. Answer: The summary of abstract should preferably be between 50 and 150 words. It should contain the following: (A) Indication of field ...

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MPEP Q&A 112: What Does 35 U.S.C. 102(a)(2) Provide? from 2017-10-17T14:00:14

Question: What does 35 U.S.C. 102(a)(2) provide? Answer: AIA 35 U.S.C. 102(a)(2) provides that a person is not entitled to a patent if the claimed invention was described in a patent issued unde...

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MPEP Q&A 111: What Must Each Information Disclosure Statement Include a Legible Copy Of? from 2017-10-10T14:00:58

Question: In addition to the list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office, what else must each information disclosure stat...

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MPEP Q&A 110: What a Petition Filed On or After September 16, 2012 Must be Accompanied By to Correct Inventorship in a Patent from 2017-10-03T14:00:42

Question: What must a petition filed on or after September 16, 2012 be accompanied by to correct the inventorship in a patent? Answer: A petition filed on or after September 16, 2012 to correct ...

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MPEP Q&A 109: How Inter Partes Reexamination Differs From Ex Parte Reexamination from 2017-09-26T14:46:21

Question: List one way inter partes reexamination differs from ex parte reexamination. Answer: Inter partes reexamination differs from ex parte reexamination in matters of procedure, such as whe...

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MPEP Q&A 108: Computer Functions Recognized to be Well‐Understood, Routine, and Conventional Functions When They are Claimed in a Merely Generic Manner from 2017-09-19T14:44:50

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 t...

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MPEP Q&A 107: Times When Explicit Petitions for Foreign Filing Licenses May Be Considered by Applicants from 2017-09-12T15:01:20

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 appl...

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MPEP Q&A 106: Indicia That a Continuing Reissue Application is Being Filed from 2017-09-05T14:04:31

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 no...

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MPEP Q&A 105: Petition Fee Requirements For Participation in the PPH from 2017-08-29T14:04:11

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 Globa...

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MPEP Q&A 104: What Submission of Article 19 Amendments Should Comprise from 2017-08-22T14:04:51

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 t...

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MPEP Q&A 103: What Grounds for Seeking Inter Partes Review are Limitedto Compared with Post-Grant Review from 2017-08-15T14:04:31

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 ...

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MPEP Q&A 102: Earlier Concluded Examination or Review of Patent from 2017-08-08T14:04:12

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 w...

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MPEP Q&A 101: Petition for a Derivation Proceeding from 2017-08-01T14:04:53

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; ...

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MPEP Q&A 100: Activities Used as an Indication of Commercial Exploitation from 2017-07-25T14:04:33

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 commerci...

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MPEP Q&A 99: Types of Information Considered Status Information from 2017-07-18T14:04:38

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 pend...

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MPEP Q&A 98: Fees Reduced by 75% for Micro Entities from 2017-07-11T14:04:16

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), sear...

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MPEP Q&A 97: Nonstatutory Double Patenting Rejection Made Under Obviousness Analysis from 2017-07-04T14:04:56

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 ana...

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MPEP Q&A 96: When a Nonpublication Request is Not Appropriate from 2017-06-27T14:04:35

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 applicatio...

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MPEP Q&A 95: What an Examiner May Do After Considering the Issues on Appeal from 2017-06-20T14:04:11

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 exam...

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MPEP Q&A 94: When a Concurrent Conflict of Interest Exists from 2017-06-13T14:04:45

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 conflic...

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MPEP Q&A 93: What is Essential Material from 2017-06-06T14:04:17

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...

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MPEP Q&A 92: Statutory Requirements to be Met Before Certificate of Correction for an Applicant’s Mistake to Issue from 2017-05-30T14:04:52

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...

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MPEP Q&A 91: Non-Limiting Examples of Types of Characteristics Considered by the Courts to Determine Marked Difference from 2017-05-23T14:04:23

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 ty...

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MPEP Q&A 90: Conditions an Examiner Should Check for Before Requiring Applicant to Add Claim to Provoke Interference from 2017-05-16T14:04:55

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 req...

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MPEP Q&A 89: Concepts the Courts Have Found to be Laws of Nature and Natural Phenomena from 2017-05-09T14:04:26

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...

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MPEP Q&A 88: What the Patent Prosecution Highway Attempts to Accomplish from 2017-05-02T14:04:02

Question: What does the Patent Prosecution Highway or PPH attempt to accomplish? Answer: The Patent Prosecution Highway, or PPH enables an applicant who receives a positive ruling on patent clai...

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MPEP Q&A 87: Reasons Practitioner Should Act as an Advocate Before a Tribunal from 2017-04-25T14:04:35

Question: List one reason a practitioner should act as an advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness. Answer: A practitioner shall n...

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MPEP Q&A 86: Assignment of Patent to Change Address for Maintenance Fee Purposes from 2017-04-18T14:04:05

Question: If a patent is assigned, will that change the “correspondence address” or “fee address” used for maintenance fee purposes? Answer: An assignment of a patent application or patent does...

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MPEP Q&A 85: Board on Deferring Action on a Petition for a Derivation Proceeding from 2017-04-11T14:04:37

Question: Can the Board defer action on a petition for a derivation proceeding? Answer: The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the exp...

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MPEP Q&A 84: Division of Fees Between Practitioners Not in the Same Firm from 2017-04-04T14:02:08

Question: Can a division of a fee between practitioners who are not in the same firm may be made? Answer: A division of a fee between practitioners who are not in the same firm may be made only ...

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MPEP Q&A 83: Filing a Petition to Institute a Post-Grant Review from 2017-03-28T14:02:40

Question: Who may file a petition to institute a post-grant review? Answer: A person who is not the patent owner may file a petition to institute a post-grant review, unless the petitioner or re...

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MPEP Q&A 82: Components International Design Applications Designating the U.S. Must Include from 2017-03-21T14:02:12

Question: What 3 components (in addition to the mandatory requirements) must an international design application designating the U.S. include? Answer: In addition to the mandatory requirements o...

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MPEP Q&A 81: Items Applicant’s Must Establish Under 35 USC 156 from 2017-03-14T14:02:41

Question: List one item the applicant must establish under 35 U.S.C. 156(a)(1)-(5). Answer: 35 U.S.C. 156(a)(1)-(5) require that the applicant establish that: (1) the patent has not expired befo...

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MPEP Q&A 80: Assignments Potentially Utilized as the Oath or Declaration from 2017-03-07T15:02:10

Question: Is it possible for an assignment in applications filed on or after September 16, 2012 to be utilized as the oath or declaration? Answer: Yes, for applications filed on or after Septemb...

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MPEP Q&A 79: Factors When Determining Sufficient Evidence Concerning Enablement Requirement from 2017-02-28T15:02:38

Question: List two factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whe...

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MPEP Q&A 78: AIA and Applications Filed Before March 16, 2013 from 2017-02-21T15:02:10

Question: Do the changes to 35 U.S.C. 102 and 103 in the AIA apply to applications filed before March 16, 2013? Answer: No, the changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any ap...

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MPEP Q&A 77: Conclusion of an Inter Partes Reexamination Proceeding from 2017-02-14T15:02:26

Question: List one of the ways an inter partes reexamination proceeding may be concluded. Answer: Inter partes reexamination proceedings may be concluded in one of three ways: The prosecution of...

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MPEP Q&A 76: Filing a Petition for a Covered Business Method Patent Review from 2017-02-07T15:02:35

Question: Who may file a petition for a covered business method patent review? Answer: A petitioner may not file a petition to institute a covered business method patent review of the patent unl...

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MPEP Q&A 75: Duty of Disclosure in Reexamination Proceedings from 2017-02-03T14:59:54

Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agen...

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MPEP Q&A 74: Sources of Information Material to Patentability from 2017-01-31T14:59:32

Question: Where may information material to patentability come from? Answer: Sources of information may include: co-workers trade shows communications from or with competitors potential infringe...

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MPEP Q&A 73: Contents of an International Application from 2017-01-27T14:59:12

Question: What must an international application contain? Answer: Any international application must contain the following elements: request, description, claim or claims, abstract and one or mo...

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MPEP Q&A 72: Filing of a Certificate of Correction from 2017-01-24T14:58:52

Question: When should a Certificate of Correction be filed instead of a reissue? Answer: While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be ...

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MPEP Q&A 71: Bibliographic Data from 2017-01-20T14:58:32

Question: What does bibliographic data include? Answer: Bibliographic data includes: inventor information; correspondence information; application information; representative information; domest...

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MPEP Q&A 70: Three Separate and Distinct Requirements of the Specification from 2017-01-17T14:58:12

Question: What are the three separate and distinct requirements required of the specification by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph? Answer: 35 U.S.C. 112(a) and pre-AIA...

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MPEP Q&A 69: Submission of a Protest from 2017-01-13T14:57:54

Question: When may a protest be submitted? Answer: A protest must be submitted prior to the mailing of a Notice of Allowance and the application must be pending when the examiner receives the in...

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MPEP Q&A 68: Ways in Which Possession May be Shown from 2017-01-10T14:57:34

Question: List one way possession may be shown. Answer: Possession may be shown in many ways. For example, possession may be shown by describing an actual reduction to practice of the claimed in...

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MPEP Q&A 67: First Step of the Recapture Rule from 2017-01-06T14:57:11

Question: What is the first step of the three-step process for the recapture rule? Answer: The first step of the three-step process for the recapture rule is: (1) first, we determine whether, an...

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MPEP Q&A 66: Relevance of Long-Felt Need and the Failure of Others from 2017-01-03T14:56:51

Question: What three things does the relevance of long-felt need and the failure of others to the issue of obviousness depend on? Answer: The relevance of long-felt need and the failure of other...

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MPEP Q&A 65: Underlying Factual Inquiries of Obviousness from 2016-12-30T14:56:30

Question: List one of the underlying factual inquiries of obviousness. Answer: The factual inquiries enunciated by the Court are as follows: Determining the scope and content of the prior art; a...

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MPEP Q&A 64: Strongest Rationale for Combining References from 2016-12-27T14:56:08

Question: What is the strongest rationale for combining references? Answer: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn fr...

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MPEP Q&A 63: Grounds of Refusal for a Notification of Refusal from 2016-12-23T14:55:42

Question: What may the grounds of refusal for a notification of refusal be based on? Answer: The grounds of refusal may be in the form of a rejection based on a condition for patentability under...

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MPEP Q&A 62: Circumstances Where Applicants May Make Amendments from 2016-12-20T14:55:19

Question: Name one circumstance where an applicant may make amendments. Answer: The applicant may amend: before or after the first Office action and also after the second Office actions; after f...

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MPEP Q&A 61: Passing Jurisdiction onto the Board from 2016-12-16T14:54:57

Question: When does jurisdiction over the proceeding pass to the Board? Answer: Jurisdiction over the proceeding passes to the Board on filing of a reply brief or the expiration of time to file ...

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MPEP Q&A 60: Contents of a Request for Republication from 2016-12-13T14:54:38

Question: What must a request for republication include? Answer: A request for republication must include: a copy of the application in compliance with the Office Electronic Filing System (EFS) ...

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MPEP Q&A 59: Concluding an Ex Parte Reexamination Proceeding from 2016-12-09T14:54:18

Question: What is one way an ex parte reexamination proceeding may be concluded? Answer: Ex parte reexamination proceedings may be concluded in one of four ways: The prosecution of the proceedin...

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MPEP Q&A 58: Electronic Publications as Printed Publications from 2016-12-06T14:53:58

Question: Is an electronic publication considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) provided the publicatio...

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MPEP Q&A 57: Government Organizations that Cannot Qualify as Nonprofit Organizations from 2016-12-02T14:53:35

Question: List two types of government organizations that cannot qualify as a nonprofit organization. Answer: Government organizations, whether domestic or foreign, cannot qualify as nonprofit o...

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MPEP Q&A 56: Four Conditions That Establish a Statutory Bar Under Pre-AIA 35 U.S.C. 102(d) from 2016-11-29T14:52:54

Question: Name the four conditions which, if all are present, establish a statutory bar under pre-AIA 35 U.S.C. 102(d). Answer: Pre-AIA 35 U.S.C. 102(d) establishes four conditions which, if all...

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MPEP Q&A 55: Obtaining Permission to File a Patent Application Abroad from 2016-11-25T14:52:30

Question: What are the two ways in which permission to file a patent application abroad may be obtained? Answer: The two ways in which permission to file a patent application abroad may be obtai...

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MPEP Q&A 54: Who Interferences May be Provoked By from 2016-11-22T14:51:59

Question: Who may provoke an interference? Answer: Interferences may be provoked by: an examiner an applicant Chapter Details: The answer to this question can be found in chapter 2300 of the MPE...

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MPEP Q&A 53: Details on AIA 35 U.S.C. 102(a) from 2016-11-18T14:51:35

Question: What does AIA 35 U.S.C. 102(a) state? Answer: Specifically, AIA 35 U.S.C. 102(a) states that: [a] person shall be entitled to a patent unless— (1) the claimed invention was patented, d...

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MPEP Q&A 52: Due Dates for Paying the Maintenance Fee Without a Surcharge from 2016-11-15T14:51:12

Question: What are the due dates for paying the maintenance fee without a surcharge? Answer: Due dates for paying without a surcharge are as follows: 3 to 3.5 years after date of issue for first...

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MPEP Q&A 51: Correspondence Address in Applications Filed Before September 16, 2012 from 2016-11-11T14:50:51

Question: Where must the correspondence address appear in applications filed before September 16, 2012? Answer: The correspondence address in applications filed before September 16, 2012 must ap...

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MPEP Q&A 50: What Right of Appeal Notice Sets Forth from 2016-11-08T14:50:29

Question: What will a Right of Appeal Notice (RAN) set forth? Answer: The RAN will identify the status of each claim. It will set forth: the grounds of rejection for all claims rejected in the R...

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MPEP Q&A 49: Correspondence to a Different Address for a Supplemental Examination Proceeding from 2016-11-04T13:50:07

Question: How can a patent owner get the Office to send correspondence to a different address for the supplemental examination proceeding? Answer: If the patent owner desires the Office to send ...

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MPEP Q&A 48: Type of Issues Triggering Rejections from 2016-11-01T13:49:44

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...

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MPEP Q&A 47: Correction of a Typographical Error on a Recorded Cover Sheet from 2016-10-28T14:49:20

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 ...

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MPEP Q&A 46: Item of Information that Raises a Substantial New Question of Patentability from 2016-10-25T14:48:15

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 r...

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MPEP Q&A 45: Timing of Demand for International Preliminary Examination from 2016-10-21T13:33:39

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)...

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MPEP Q&A 44: Proper Evidentiary Basis for a Rejection Under 35 U.S.C. 171 from 2016-10-18T13:33:05

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...

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MPEP Q&A 43: Ways a Patent May be Corrected or Amended from 2016-10-14T13:32:31

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 be...

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MPEP Q&A 42: Reproduction of Asexually Propagated Plants from 2016-10-11T13:31:52

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...

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MPEP Q&A 41: Withdrawing an Application From Issue After Payment of the Issue Fee from 2016-10-07T13:31:17

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:...

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MPEP Q&A 40: Situations Where There May be a Remand For Examiner Action Not For Further Consideration of a Rejection from 2016-10-04T14:30:37

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 example...

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MPEP Q&A 39: Types of Applications That Will Not be Published from 2016-09-30T14:29:01

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 de...

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MPEP Q&A 38: Common Types of Linking Claims from 2016-09-27T14:27:09

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 ...

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MPEP Q&A 37: Non-Structural Generic Placeholders Invoking 35 USC 112(f) from 2016-09-23T15:22:13

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 placeholder...

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MPEP Q&A 36: Documents a Person Acting in a Representative Capacity May Not Sign from 2016-09-20T15:20:29

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 grantin...

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MPEP Q&A 35: Example of What an Oath or Declaration Must Do from 2016-09-16T15:22:38

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...

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MPEP Q&A 34: Item an Applicant May Submit as Objective Evidence That Common Ownership Existed from 2016-09-13T15:22:54

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 ...

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MPEP Q&A 33: What is a Divisional Application? from 2016-09-09T15:22:04

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 (includin...

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MPEP Q&A 32: Circumstance Where Joint Ownership Exists from 2016-09-06T15:23:58

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 in...

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MPEP Q&A 31: Applicant Action After Invention is Found Obvious from 2016-09-02T15:20:04

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 per...

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MPEP Q&A 30: Elements of an International Design Application from 2016-08-30T15:21:15

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 categorie...

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MPEP Q&A 29: Access to a Pending orAbandoned Application Filed On or After September 16, 2012 from 2016-08-26T15:27:52

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 Septe...

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MPEP Q&A 28: Filing Fees Reduced by 50% for Small Entities from 2016-08-23T15:35:01

Question: List two types of filing fees that are reduced by 50% for small entities. Answer: The fees which are reduced by 50% for small entities include patent application filing fees including ...

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MPEP Q&A 27: Difference Between AIA 35 USC 102(c) and the CREATE Act from 2016-08-19T15:33:26

Question: What are the major differences between AIA 35 U.S.C. 102(c) and the CREATE Act? Answer: The major differences between AIA 35 U.S.C. 102(c) and the CREATE Act are that: the AIA provisio...

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MPEP Q&A 26: Information Submitted When Paying Maintenance Fee from 2016-08-16T15:24:52

Question: List two pieces of information regarding the patent that should be submitted when paying the maintenance fee. Answer: The information regarding the patent that should be submitted with...

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MPEP Q&A 25: Conditions for First Application to be Granted a Notice of Allowance from 2016-08-12T15:20:59

Question: Under what conditions will a first application usually be granted a Notice of Allowance and become a patent in spite of a second application with potentially interfering claims? Answer...

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MPEP Q&A 24: Petitions Under 37 CFR 1.137 from 2016-08-09T15:25:54

Question: What must a petition under 37 CFR 1.137 be accompanied by? Answer: Specifically, 37 CFR 1.137(b) provides that a grantable petition pursuant to 37 CFR 1.137 must be accompanied by: The...

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MPEP Q&A 23: Response to a Notice of Noncompliant Supplemental Examination Request from 2016-08-05T15:20:59

Question: How can a patent owner file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request? Answer: The patent owner has one opportunity to file a correct...

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MPEP Q&A 22: Required Elements of a Request for Ex Parte Reexamination from 2016-08-02T15:24

Question: List one of the required elements of a request for ex parte reexamination. Answer: The required elements of a request for ex parte reexamination are as follows: “A statement pointing o...

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MPEP Q&A 21: Request for Reinstatement of All or Part of the Period of Adjustment from 2016-07-29T15:20:41

Question: What must a request for reinstatement of all or part of the period of adjustment reduced for failing to reply to a rejection, objection, argument, or other request within three months ...

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MPEP Q&A 20: Details of Substantial New Question of Patentability from 2016-07-26T09:00:02

Question: What should a substantial new question of patentability not be based upon? Answer: A substantial new question cannot be based upon: prior art expressly relied upon by the examiner duri...

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MPEP Q&A 19: Items a Protestor Must Give the PTO from 2016-07-22T09:00:39

Question: What must a protestor give the PTO? Answer: A protestor must give the PTO: a listing of the patents, publications or other information relied upon a copy of each item listed a translat...

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MPEP Q&A 18: Duty to Disclose from 2016-07-19T09:00:41

Question: Who has a duty to disclose? Answer: The following individuals have a duty to disclose: each inventor each registered practitioner each assignee every other person who is substantially ...

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MPEP Q&A 17: Plants That are Not Patentable from 2016-07-15T09:00:19

Question: Name two types of plants that are not patentable. Answer: All plants are patentable except: bacteria those that are tuber propagated plants that are not invented or discovered in a cul...

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MPEP Q&A 16: Signature Required for Disclaimer in Patent or Reexamination Proceeding from 2016-07-12T09:00:11

Question: Who must a disclaimer be signed by in a patent or a reexamination proceeding? Answer: A disclaimer filed in a patent or a reexamination proceeding must be signed by either: the patente...

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MPEP Q&A 15: Procedural Step for International Applications Going Through the International Searching Authority from 2016-07-08T09:00:32

Question: List one procedural step that all international applications go through in the International Searching Authority. Answer: The main procedural steps that any international application g...

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MPEP Q&A 14: Request for Simultaneous Issue from 2016-07-05T09:00:15

Question: What must a request for simultaneous issue contain? Answer: The request must contain the following information about each allowed application for which simultaneous issue is requested;...

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MPEP Q&A 13: Term of Utility vs. Design Patent from 2016-07-01T09:00:23

Question: What is the term of a utility patent versus the term of a design patent? Answer: The term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from...

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MPEP Q&A 12: Two Separate and Distinct Requirements for 35 U.S.C. 112(b) from 2016-06-28T09:00:44

Question: What are the two separate and distinct requirements of 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph? Answer: 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph ...

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MPEP Q&A 11: Items Required in an Appeal Brief from 2016-06-24T09:00:30

Question: List two items which are required in an appeal brief. Answer: The specific items required in an appeal brief are: (i) Real party in interest. (ii) Related appeals, interferences, and t...

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MPEP Q&A 10: Contesting an Objection from 2016-06-21T09:00:57

Question: What is one way an applicant may contest an objection? Answer: An applicant may contest an objection by: asking the examiner to reconsider it. filing a petition to the Commissioner. Ch...

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MPEP Q&A 9: Two Types of Double Patenting Rejections from 2016-06-17T09:00:54

Question: What are the two types of double patenting rejections? Answer: There are generally two types of double patenting rejections. One is the “same invention” type double patenting rejection...

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MPEP Q&A 8: Filings Third-Party Submissions May Not Be Directed To from 2016-06-14T09:00:52

Question: List at least one type of filing that third-party submissions may not be directed to. Answer: Third-party submissions may not be directed to: provisional applications, issued patents, ...

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MPEP Q&A 7: Type of Descriptions of the Interest Conveyed or the Transaction to Be Recorded from 2016-06-10T09:00:47

Question: List two examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified. Answer: Examples of the type of descriptions of the interes...

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MPEP Q&A 6: Applicant Initiated Interview Request Forms from 2016-06-07T09:00:14

Question: What should an Applicant Initiated Interview Request Form include? Answer: An Applicant Initiated Interview Request Form should identify the participants of the interview, the proposed...

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MPEP Q&A 5: Situations in Which Drawings are Not Considered Necessary from 2016-06-03T10:34:15

Question: List a situation in which drawings are usually not considered necessary for the understanding of the invention. Answer: It has been USPTO practice to treat an application that contain...

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MPEP Q&A 4: Written Authority to Grant Access to a Provisional Application from 2016-06-03T09:31:04

Question: Name two individuals who through written authority may grant access to a provisional application. Answer: In provisional applications, access will only be given to parties with written...

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MPEP Q&A 3: Significant Differences Between Nonprovisional and Provisional Applications from 2016-05-31T09:24:38

Question: List two significant differences between nonprovisional applications and provisional applications. Answer: The following list includes significant differences between nonprovisional ap...

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MPEP Q&A 2: Correspondence That May Not be Transmitted by Facsimile from 2016-05-31T08:58:18

Question: Name two types of correspondence that may not be transmitted by facsimile. Answer: Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt i...

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MPEP Q&A 1: Major Types of Patent Status from 2016-05-31T08:34:17

Question: What are the 3 major types of patent status? Answer: The 3 major types of patent status include: pending applications, abandoned applications, and issued patents. Chapter Details: The ...

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Podcasts by Patent Bar MPEP Q

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MPEP Q&A 290: Use of metric system of measurements in patent applications from 2023-12-05T15:15:26

MPEP Q&A 289: List two situations that are not considered new grounds of rejection? from 2023-11-21T15:15:13

MPEP Q&A 288: How may an examiner treat an amendment not fully responsive to a non-final Office action? from 2023-11-07T15:15

MPEP Q&A 287: When inconsistent information is given for an application data sheet, what submission will govern control? from 2023-10-24T14:15:47

MPEP Q&A 286: What are the factual inquiries of obviousness enunciated by the Court? from 2023-10-10T14:15:33

MPEP Q&A 285: What don’t the provisions of 37 CFR 1.114 apply to? from 2023-09-26T14:15:19

MPEP Q&A 284: When will a provisional application be given a filing date? from 2023-09-12T14:15:04

MPEP Q&A 283: List of special cases from 2023-08-29T14:15:50

MPEP Q&A 282: Continued prosecution application practice for utility and plant applications from 2023-08-15T14:15:36

MPEP Q&A 281: Time for reply to final rejection from 2023-08-01T14:15:23

MPEP Q&A 280: When does the revocation of a filing receipt license become effective? from 2023-07-18T14:15:09

MPEP Q&A 279: Methods of paying a maintenance fee and necessary surcharges from 2023-07-04T14:15:56

MPEP Q&A 278: Claiming the benefit of a provisional application from 2023-06-20T14:15:42

MPEP Q&A 277: Exceptions to extensions of time from 2023-06-06T14:15:27

MPEP Q&A 276: Examples of exemplary rationales of a prima facie case of obviousness from 2023-05-23T14:15:14

MPEP Q&A 275: Receipt of drawing after the filing date from 2023-05-09T14:15

MPEP Q&A 274: Inspection of patent files by the public from 2023-04-25T14:32:53

MPEP Q&A 273: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee? from 2023-04-11T14:15:34

MPEP Q&A 272: Limitation that the courts have found not to be enough to qualify as“significantly more”when recited in a claim with a judicial exception. from 2023-03-28T14:15:22

MPEP Q&A 271: What are three pieces of information each patent listed in the Official Gazette may give? from 2023-03-14T14:15:09

MPEP Q&A 270: Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for? from 2023-02-28T15:15:55

MPEP Q&A 269: Two laboratory techniques the courts have recognized as well-understood, routine, conventional activities in the life science arts from 2023-02-14T15:15:43

MPEP Q&A 268: What should the examiner do? from 2023-01-31T15:15:57

MPEP Q&A 267: What are the four purposes 35 U.S.C. 101 has been interpreted as imposing? from 2023-01-17T15:15:42

MPEP Q&A 266: Name one advantage a CPA has compared to a continuation or divisional application from 2023-01-03T15:15:28

MPEP Q&A 265: What is the second part of the Alice/Mayo test often referred to as? from 2022-12-20T15:15:15

MPEP Q&A 264: How do examiners evaluate integration into a practical application? from 2022-12-06T15:15:03

MPEP Q&A 263: How is the markedly different characteristics analysis performed? from 2022-11-22T15:15:50

MPEP Q&A 262: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind. from 2022-11-08T15:28:32

MPEP Q&A 261: What is meant by a fundamental economic practice or principle? from 2022-10-25T14:15:18

MPEP Q&A 257: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time? from 2022-08-30T14:15:24

MPEP Q&A 256: What type of applications and proceedings may submit drawings that are not black and white line drawings via EFS-Web? from 2022-08-16T14:15:12

MPEP Q&A 255: When do members of a Markush group share a ‘single structural similarity’? from 2022-08-02T14:15:59

MPEP Q&A 254: What must a statement under 37 CFR 1.97(e) state? from 2022-07-19T14:15:18

MPEP Q&A 253: What must a claim in dependent form contain? from 2022-07-05T14:15:05

MPEP Q&A 252: When the online fee payment in EFS-Web is unavailable, what types of submissions cannot be filed via EFS-Web? from 2022-06-21T14:15:47

MPEP Q&A 251: Benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) from 2022-06-07T14:15:29

MPEP Q&A 250: What are examples of situations where ownership must be established? from 2022-05-24T14:24:15

MPEP Q&A 249: What happens if a claim for foreign priority is presented after the time period set in 37 CFR 1.55? from 2022-05-10T14:08

MPEP Q&A 248: What are the enumerated groupings of abstract ideas defined as? from 2022-04-26T14:23:34

MPEP Q&A 247: When is a protest considered timely? from 2022-04-12T14:23:14

MPEP Q&A 246: Will the paper application file itself be available to the public for inspection? from 2022-03-29T14:23

MPEP Q&A 245: How is the effective filing date of a claimed invention determined? from 2022-03-15T14:16:40

MPEP Q&A 244: How can correspondence filed via the Office electronic filing system be signed? from 2022-03-01T15:15:27

MPEP Q&A 243: Who may sign the substitute statement for a juristic entity? from 2022-02-15T15:15:10

MPEP Q&A 242: When will an international application not need a foreign filing license? from 2022-02-01T15:15:53

MPEP Q&A 241: Paying maintenance fee due prior to the issuance of a reissue patent from 2022-01-18T15:15:35

MPEP Q&A 240: What is an example of a situation that does not define ‘substantial utilities’? from 2022-01-04T15:15:16

MPEP Q&A 239: Can a patent owner avoid double patenting by disclaiming the earlier patent? from 2021-12-21T15:15:58

MPEP Q&A 238: What are examples of laws of nature or natural phenomena? from 2021-12-07T15:15:30

MPEP Q&A 237: What is an example of non-limiting claims not directed to statutory categories? from 2021-11-23T15:15:11

MPEP Q&A 236: Who is the applicant for a patent? from 2021-11-09T15:15:54

MPEP Q&A 235: What is a mathematical relationship? from 2021-10-26T14:15:37

MPEP Q&A 234: How can patent applications be sent to the USPTO? from 2021-10-12T14:15:19

MPEP Q&A 233: List application filing dates for determining whether patent is subject to maintenance fees from 2021-09-28T14:15:01

MPEP Q&A 232: Can social media websites be a source of prior art? from 2021-09-14T14:15:44

MPEP Q&A 231: Types of papers that may be filed and processed electronically from 2021-08-31T14:15:23

MPEP Q&A 230: What is an ‘improper Markush grouping’? from 2021-08-17T14:15:03

MPEP Q&A 229: When are the claims of a new application finally rejected in the first Office action? from 2021-08-03T14:15:44

MPEP Q&A 228: Who is listed on the assignee section of a patent? from 2021-07-20T14:48:20

MPEP Q&A 227: What are the requirements for request for a corrected publication? from 2021-07-06T14:13:03

MPEP Q&A 226: When is a rejection on the ground of lack of utility appropriate? from 2021-06-22T14:12:43

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. from 2021-06-08T14:12:27

MPEP Q&A 224: What are the“Appropriate circumstances”to vacate the order granting reexamination? from 2021-05-25T14:12:10

MPEP Q&A 223: What Size Non-Patent Documents Require Document Size Fees? from 2021-05-11T14:11:47

MPEP Q&A 222: What are the Three Conditions That Must be Satisfied …? from 2021-04-27T14:11:32

MPEP Q&A 221: What are the Three Types of Patent Documents Available as Prior Art …? from 2021-04-13T14:11:13

MPEP Q&A 220: What are the Section 42.208 paragraph (c) Amendments? from 2021-03-30T14:10:54

MPEP Q&A 219: When may the OPAP object to and require corrected drawings within a set time period? from 2021-03-16T14:10:39

MPEP Q&A 218: What is the issue of correlation about as related to matters of invitro/in vivo? from 2021-03-02T15:10:21

MPEP Q&A 217: What are the Section 42.23 paragraph (b) Amendments? from 2021-02-16T15:09:59

MPEP Q&A 216: Time for Establishing ISR and WO of the International Search Authority from 2021-02-02T15:03:04

MPEP Q&A 215: When Did Amendments to the Rules of Practice for Trials Before PTAB Take Effect? from 2021-01-19T15:03:48

MPEP Q&A 214: What are Sufficient Grounds for Post-Grant Review? from 2021-01-05T15:03:33

MPEP Q&A 213: Can Attorney Arguments Take the Place of Evidence? from 2020-12-22T15:03:58

MPEP Q&A 212: What is the Number of Days Before an Oral Argument for Exchange of Exhibits? from 2020-12-08T15:03:38

MPEP Q&A 211: When May an Abandoned Application be Used as Prior Art? from 2020-11-24T15:03:39

MPEP Q&A 210: What is the Executive Summary of the Supplement ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board? from 2020-11-10T15:03:30