Patent Bar Mpep Q & A Podcast

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 involved in the preparation or prosecution of the application the duty does not extend to typists, clerks, and similar personnel the duty does not extend to corporations Chapter Details: The answer to this question can be found in chapter 2000 of the MPEP. This chapter covers the duty to disclose. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may… The post MPEP Q & A 18: Duty to Disclose appeared first on Patent Education Series.

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 cultivated state and asexually reproduced plants that are not obvious Chapter Details: The answer to this question can be found in chapter 1600 of the MPEP. This chapter covers plant patents. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer comes… The post MPEP Q & A 17: Plants That are Not Patentable appeared first on Patent Education Series.

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 patentee (the assignee, the inventor(s) if the patent is not assigned, or the assignee and the inventors if the patent is assigned-in-part), or an attorney or agent of record. Chapter Details: The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of Patents. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the… The post MPEP Q & A 16: Signature Required for Disclaimer in Patent or Reexamination Proceeding appeared first on Patent Education Series.

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 goes through in the International Searching Authority are: the making of the international search, the preparing of the international search report and for international applications having an international filing date on or after January 1, 2004, the preparing of a written opinion of the International Searching Authority Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers Patent Cooperation Treaty. The answer is from the 9th… The post MPEP Q & A 15: Procedural Step for International Applications Going Through the International Searching Authority appeared first on Patent Education Series.

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; application number, filing date, name(s) of inventor(s), title of invention, and date of allowance. Chapter Details: The answer to this question can be found in chapter 1300 of the MPEP. This chapter covers Allowance and Issue. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer… The post MPEP Q & A 14: Request for Simultaneous Issue appeared first on Patent Education Series.

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 the U.S. filing date; or if the application contains a specific reference to an earlier application, 20 years from the earliest effective U.S. filing date, while the term of a design patent is 15 years measured from the date of grant, if the design application was filed on or after May 13, 2015 (or 14 years if filed before May 13, 2015).… The post MPEP Q & A 13: Term of Utility vs. Design Patent appeared first on Patent Education Series.

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 contains two separate and distinct requirements: The first one is that the claim(s) set forth the subject matter applicants regard as the invention, and The second one is that the claim(s) particularly point out and distinctly claim the invention. Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability. The answer is from the 9th Edition, Revision 07.2015. Depending… The post MPEP Q & A 12: Two Separate and Distinct Requirements for 35 U.S.C. 112(b) appeared first on Patent Education Series.

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 trials. (iii) Summary of claimed subject matter. (iv) Argument. (v) Claims appendix. Chapter Details: The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeals. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer… The post MPEP Q & A 11: Items Required in an Appeal Brief appeared first on Patent Education Series.

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. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers the examination of applications. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question comes from section 706.01 of the MPEP.  The following is a… The post MPEP Q & A 10: Contesting an Objection appeared first on Patent Education Series.

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 based on 35 U.S.C. 101 which states in the singular that an inventor “may obtain a patent.” The second is the “nonstatutory-type” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent. Chapter Details: The answer to this question can… The post MPEP Q & A 9: Two Types of Double Patenting Rejections appeared first on Patent Education Series.

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, reissue applications, and reexamination proceedings. Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers the Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions. Section Summary: This question and answer… The post MPEP Q & A 8: Filings Third-Party Submissions May Not Be Directed To appeared first on Patent Education Series.

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 interest conveyed or transaction to be recorded that can be identified are: assignment; security agreement; merger; change of name; license; foreclosure; lien; contract; and joint research agreement. Chapter Details: The answer to this question can be found in chapter 300 of the MPEP. This chapter covers ownership and assignment. This is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may… The post MPEP Q & A 7: Type of Descriptions of the Interest Conveyed or the Transaction to Be Recorded appeared first on Patent Education Series.

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 date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP. This chapter covers representative of the applicant or owner. The question is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may… The post MPEP Q & A 6: Applicant Initiated Interview Request Forms appeared first on Patent Education Series.

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 contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the invention. Other situations in which drawings are usually not considered necessary for the understanding of the invention are: Coated articles or products; Articles made from a particular material or composition; Laminated structures; Articles, apparatus, or systems where sole distinguishing feature is presence of a particular material. Chapter Details:… The post MPEP Q & A 5: Situations in Which Drawings are Not Considered Necessary appeared first on Patent Education Series.

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 authority from the following: a named inventor the assignee of record the attorney or agent of record or, for an application filed on or after September 16, 2012, an applicant other than an inventor. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing. The answer is from the 9th Edition, Revision 07.2015. Section Summary: This… The post MPEP Q & A 4: Written Authority to Grant Access to a Provisional Application appeared first on Patent Education Series.

Question: List two significant differences between nonprovisional applications and provisional applications. Answer: The following list includes significant differences between nonprovisional applications and provisional applications: No claim is required in a provisional application. No oath or declaration is required in a provisional application. Provisional applications will not be examined for patentability. A provisional application is not entitled to claim priority to any foreign application or the benefit of any earlier filed national application. A design patent application is not entitled to claim the benefit of a provisional application Chapter Details: The answer to this question can be found in chapter 200… The post MPEP Q & A 3: Significant Differences Between Nonprovisional and Provisional Applications appeared first on Patent Education Series.

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 in the following situations: A document that is required by statute to be certified A national patent application specification and drawing (provisional or nonprovisional) or other correspondence for the purpose of obtaining an application filing date, other than a continued prosecution application; An international application for patent; A copy of the international application and the basic national fee necessary to enter the national stage; A third-party submission. Correspondence relating to… The post MPEP Q & A 2: Correspondence That May Not be Transmitted by Facsimile appeared first on Patent Education Series.

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 answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing. The question and answer is from the 9th Edition, Revision 07.2015. Section Summary: This question specifically comes from section 101 of the MPEP.  The following is a brief summary of section 101.   101  General Patent applications must be kept confidential. Approved patents, however, are freely open to… The post MPEP Q & A 1: Major Types of Patent Status appeared first on Patent Education Series.