Patent Bar MPEP Q & A Podcast

By Lisa Parmley, USPTO Patent Practitioner #51006

Patent Bar Review... more

· Education

3.9

1212 ratings

Download on the App Store

Download on the App Store

Get it on Google Play

FAQs about Patent Bar MPEP Q & A Podcast:

How many episodes does Patent Bar MPEP Q & A Podcast have?

The podcast currently has 459 episodes available.

Patent Bar MPEP Q & A Podcast episodes:

April 16, 2019 MPEP Q & A 170: Must a Claim be Identified to a Correct Category of Subject Matter?
Question: Must a claim be identified to a correct category of subject matter? Answer: It is not necessary to identify a single category into which a claim falls, so long as it is clear that the claim falls into at least one category. It is also not necessary to identify a “correct” category into which […]
The post MPEP Q & A 170: Must a Claim be Identified to a Correct Category of Subject Matter? appeared first on Patent Education Series.
...more
3min
April 16, 2019 MPEP Q & A 170: Must a Claim be Identified to a Correct Category of Subject Matter?

Question:
Must a claim be identified to a correct category of subject matter?
Answer:
It is not necessary to identify a single category into which a claim falls, so long as it is clear that the claim falls into at least one category. It is also not necessary to identify a “correct” category into which the claim falls, because although in many instances it is clear within which category a claimed invention falls, a claim may satisfy the requirements of more than one category.
Chapter Details:
The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability.
The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2106.03 of the MPEP. The following is a brief summary of section 2106.03.
2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter
The four categories of statutory subject matter are; processes, machines, manufactures, and compositions of matter. This section covers each of the categories along with details on how to determine whether a claim fits in a statutory category.
...more
3min
April 02, 2019 MPEP Q & A 169: Non-Limiting Claims Not Directed to Any of the Statutory Categories.
Question: Provide an example of a non-limiting claim that is not directed to any of the statutory categories. Answer: Examples of a non-limiting claim that is not directed to any of the statutory categories include; Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) […]
The post MPEP Q & A 169: Non-Limiting Claims Not Directed to Any of the Statutory Categories. appeared first on Patent Education Series.
...more
4min
April 02, 2019 MPEP Q & A 169: Non-Limiting Claims Not Directed to Any of the Statutory Categories.

Question:
Provide an example of a non-limiting claim that is not directed to any of the statutory categories.
Answer:
Examples of a non-limiting claim that is not directed to any of the statutory categories include;

* Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations;
* Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave; and
* Subject matter that the statute expressly prohibits from being patented, such as humans per se, which are excluded under The Leahy-Smith America Invents Act (AIA).

Chapter Details:
The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability.
The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2106.03 of the MPEP. The following is a brief summary of section 2106.03.
2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter
The four categories of statutory subject matter are; processes, machines, manufactures, and compositions of matter. This section covers each of the categories along with details on how to determine whether a claim fits in a statutory category.
...more
4min
March 19, 2019 MPEP Q & A 168: Competent Representation to a Client
Question: A practitioner shall provide competent representation to a client. What does competent representation to a client entail? Answer: Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation. Chapter Details: The answer to this question can be found in the following supplement: Changes to Representation of […]
The post MPEP Q & A 168: Competent Representation to a Client appeared first on Patent Education Series.
...more
3min
March 19, 2019 MPEP Q & A 168: Competent Representation to a Client

Question:
A practitioner shall provide competent representation to a client. What does competent representation to a client entail?
Answer:
Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation.
Chapter Details:
The answer to this question can be found in the following supplement: Changes to Representation of Others Before the USPTO Final Rules. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.
Section Summary:
This question and answer comes from the following supplement: Changes to Representation of Others Before the USPTO Final Rules. It specifically comes from 11.101 which covers Competence.
...more
3min
March 05, 2019 MPEP Q & A 167: When Must Applicants Timely File a Notice of Foreign Filing to Avoid Abandonment of a U.S. Application?
Question: Name one circumstance where applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application. Answer: Applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application if: applicant filed a nonpublication request in the U.S. application filed under 35 U.S.C. 111(a); applicant subsequently […]
The post MPEP Q & A 167: When Must Applicants Timely File a Notice of Foreign Filing to Avoid Abandonment of a U.S. Application? appeared first on Patent Education Series.
...more
4min
March 05, 2019 MPEP Q & A 167: When Must Applicants Timely File a Notice of Foreign Filing to Avoid Abandonment of a U.S. Application?

Question:
Name one circumstance where applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application.
Answer:
Applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application if:

* applicant filed a nonpublication request in the U.S. application filed under 35 U.S.C. 111(a);
* applicant subsequently filed a foreign or international application directed to the invention disclosed in the U.S. application in a foreign country, or under a multilateral international agreement, that requires publication of applications 18 months after filing (foreign filing or counterpart application); and
* applicant did not rescind the nonpublication request before filing the foreign or international application.

Chapter Details:
The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers statutory invention registration (SIR); pre-grant publication (PGPub) and preissuance submissions.
The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1124 of the MPEP. The following is a brief summary of section 1124.
1124 Notice of Foreign Filing
This section covers the filing of a notice of foreign filing. The notice of foreign filing must be filed not later than 45 days after the filing date of the counterpart application or the application will become abandoned.
...more
4min
February 19, 2019 MPEP Q & A 166: Further Written Opinion Established by the International Preliminary Examining Authority
Question: Name one item any further written opinion established by the International Preliminary Examining Authority should set forth. Answer: Any further written opinion established by the International Preliminary Examining Authority should set forth, as applicable: (A) Any defects in the international application concerning subject matter which is not required to be examined or which is […]
The post MPEP Q & A 166: Further Written Opinion Established by the International Preliminary Examining Authority appeared first on Patent Education Series.
...more
5min
February 19, 2019 MPEP Q & A 166: Further Written Opinion Established by the International Preliminary Examining Authority

Question:
Name one item any further written opinion established by the International Preliminary Examining Authority should set forth.
Answer:
Any further written opinion established by the International Preliminary Examining Authority should set forth, as applicable:

* (A) Any defects in the international application concerning subject matter which is not required to be examined or which is unclear or inadequately supported;
* (B) Any negative findings with respect to any of the claims because of a lack of novelty, inventive step (non-obviousness) or industrial applicability;
* (C) Any defects in the form or contents of the international application;
* (D) Any finding by the examiner that an amendment goes beyond the disclosure in the international application as originally filed;
* (E) Any observation which the examiner wishes to make on the clarity of the claims, the description, the drawings or to the question whether the claims are fully supported by the description;
* (F) Any decision by the examiner not to carry out the international preliminary examination on a claim for which no international search report was issued; or
* (G) If the examiner considers that no acceptable nucleotide and/or amino acid sequence listing is available in a form that would allow a meaningful international preliminary examination to be carried out.

Chapter Details:
The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers the patent cooperation treaty.
The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1860 of the MPEP. The following is a brief summary of section 1860.
1860 International Preliminary Examination Procedure
This section covers the procedure for international preliminary examination. It also covers when a further written opinion should be prepared by the examiner. This includes times when applicant files a response which includes a persuasive argument that the written opinion issued by the International Searching Authority was improper because of a negative opinion with respect to a lack of novelty, inventive step (non-obviousness) or industrial applicability; and which results in the examiner considering any of the claims to lack novelty, inventive step (non-obviousness) or industrial applicability based on new art not necessitated by any amendment.
...more
5min

FAQs about Patent Bar MPEP Q & A Podcast:

How many episodes does Patent Bar MPEP Q & A Podcast have?

The podcast currently has 459 episodes available.

More shows like Patent Bar MPEP Q & A Podcast

6 Minute English by BBC Radio

6 Minute English

1,828 Listeners

Learning English Conversations by BBC Radio

Learning English Conversations

1,069 Listeners

Planet Money by NPR

Planet Money

30,898 Listeners

Learning English Grammar by BBC Radio

Learning English Grammar

316 Listeners

The Daily by The New York Times

The Daily

111,382 Listeners