Patent Bar MPEP Q & A Podcast

By Lisa Parmley, USPTO Patent Practitioner #51006

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FAQs about Patent Bar MPEP Q & A Podcast:

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

The podcast currently has 460 episodes available.

Patent Bar MPEP Q & A Podcast episodes:

January 23, 2018 MPEP Q & A 126: Time When a Third Party Submission Must be Made

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; or
* The later of:

* (i) Six months after the date on which the application is first published by the Office, or
* (ii) The date the first rejection under 37 CFR 1.104 of any claim by the examiner is given or mailed during the examination of the application.

Chapter Details:
The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers Statutory Invention Registration (SIR) and Pre-Grant Publication.
The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1134.01 of the MPEP. The following is a brief summary of section 1134.01.
1134.01 Third Party Submissions Under 37 CFR 1.290
This section covers third party submissions under 37 C.F.R. 1.290. The America Invents Act (AIA) amended 35 U.S.C. 122 by providing a mechanism for third parties to submit printed publications in another party’s patent application. Third-party submissions under 37 CFR 1.99 were eliminated as of September 16, 2012.
This section covers the time for filing a third-party submission along with the content requirements for a third party submission. The type of information that may be submitted in a third-party submission is limited to patents, published patent applications, and other printed publications of potential relevance to the examination of a patent application. However, any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application.

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4min
January 16, 2018 MPEP Q & A 125: Reasons Why a Petition Filed Under 35 U.S.C. 321 May be Considered
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 filed under 35 U.S.C. 321 may be considered. Answer: 35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered […]
The post MPEP Q & A 125: Reasons Why a Petition Filed Under 35 U.S.C. 321 May be Considered appeared first on Patent Education Series.
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5min
January 16, 2018 MPEP Q & A 125: Reasons Why a Petition Filed Under 35 U.S.C. 321 May be Considered

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 filed under 35 U.S.C. 321 may be considered.
Answer:
35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered only if:

* (1) The petition is accompanied by payment of the fee established by the Director under 35 U.S.C. 321;
* (2) The petition identifies all real parties in interest;
* (3) The petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including:

* (A) Copies of patents and printed publications that the petitioner relies upon in support of the petition and
* (B) Affidavits or declarations of supporting evidence and opinions, if the petitioner relies on other factual evidence or on expert opinions;

* (4) The petition provides such other information as the Director may require by regulation; and
* (5) The petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) of 35 U.S.C. 322(a) to the patent owner or, if applicable, the designated representative of the patent owner.

Chapter Details:
The answer to this question can be found in the following supplement: Inter Partes, Post Grant, and Covered Business Method Review Final Rules. This is a special supplement that at the time of this 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: Inter Partes, Post Grant, and Covered Business Method Review Final Rules. It specifically comes from 35 U.S.C. 322: Petitions. Here’s a short summary of this statute:
35 U.S.C. 322: Petitions.
35 U.S.C. 322 covers petitions involved in post-grant reviews.
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5min
January 09, 2018 MPEP Q & A 124: Situations Where the Examiner is Not Responsible for Examining the Sufficiency of the Showing
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 showing except when: The application claim is subject to a rejection under 35 U.S.C. 102(a) or (e) and the applicant files an interference suggestion instead of […]
The post MPEP Q & A 124: Situations Where the Examiner is Not Responsible for Examining the Sufficiency of the Showing appeared first on Patent Education Series.
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5min
January 09, 2018 MPEP Q & A 124: Situations Where the Examiner is Not Responsible for Examining the Sufficiency of the Showing

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 showing except when:

* The application claim is subject to a rejection under 35 U.S.C. 102(a) or (e) and the applicant files an interference suggestion instead of attempting to overcome the rejection.

* In this case the examiner must decide if the applicant’s showing is sufficient to overcome the rejection.

* If the examiner finds the showing not sufficient, then the rejection under 102(a) or (e) still holds true and the examination of the application is not complete (remember, interferences may not be called when the examination is not yet finished).

* Compliance with 35 U.S.C. 135(b) is not met:

* The application does not have a claim for “substantially the same subject matter” as the interfering patent or published application prior to one-year from the date on which the interfering patent or published application was granted or published.
* If the applicant does not appear to have had a claim for “substantially the same subject matter” as at least one of the patent claims prior to the expiration of the one-year period, the examiner may require that the applicant explain how the requirements of 35 U.S.C. 135(b) are met, otherwise, a rejection under 35 U.S.C. 135(b) will be made.

Chapter Details:
The answer to this question can be found in chapter 2300 of the MPEP. This chapter covers Interference Proceedings.
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 from section 2304 of the MPEP. The following is a brief summary of section 2304.
2304 Suggesting an Interference
An interference may be suggested by an applicant or an examiner. This section explains what happens depending on whether an applicant or an examiner calls the interference. It discusses the preliminary activities that need to happen before referring an interference to the Board. For instance, an interference search must be performed on each application in condition for allowance.
In addition, this section covers the difference between the proceedings when an applicant suggests an interference vs. when the examiner suggests an interference. For example, when an applicant suggests an interference, the examiner will need to review the suggestion to ensure it meets the requirements. A patentee may not suggest an interference. The only way is for the patentee to become an applicant by filing a reissue application. Further details for suggesting an interference are covered in this section.
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5min
January 02, 2018 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?
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 correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in the […]
The post 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? appeared first on Patent Education Series.
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3min
January 02, 2018 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?

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 correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in the following situations:

* To correct inventorship.
* A correction for failure to claim priority.

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 question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1480 of the MPEP. The following is a brief summary of section 1480.
1480 Certificates of Correction — Office Mistake
This section discusses Certificates of correction when the Office made the mistake. Certificates of correction are used for minor mistakes (like typos) in issued patents. It includes additional information on when to use a Certificate of correction.
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3min
December 26, 2017 MPEP Q & A 122: Advantages of Filing a CPA Compared to a Continuation or Divisional Application
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 divisional application: The papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) […]
The post MPEP Q & A 122: Advantages of Filing a CPA Compared to a Continuation or Divisional Application appeared first on Patent Education Series.
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4min
December 26, 2017 MPEP Q & A 122: Advantages of Filing a CPA Compared to a Continuation or Divisional Application

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 divisional application:

* The papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).
* In addition, the Office will not normally issue a new filing receipt for a CPA.
* The time delay between the filing date and the first Office action should be less for a CPA than for an application filed under 37 CFR 1.53(b).

Chapter Details:
The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types, Cross-Noting and Status of Application.
The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 201.06(d) of the MPEP. The following is a brief summary of section 201.06(d).
201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
This section discusses 37 C.F.R. 1.53(d), CPA practice in detail. CPA practice is not allowed for utility and plant applications, only design applications. CPA’s are treated as amended applications as of the filing date of the CPA.
This section covers conditions for filing CPA’s, signature requirements, filing date details, small entity/microentity status, extensions of time, inventorship, and examination of CPA’s including the benefit of earlier filing date, terminal disclaimers, prior election, information disclosure statements and preliminary amendments, copies of affidavits, and public access to CPA’s.
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4min
December 19, 2017 MPEP Q & A 121: Times When a Request for Continuing Examination May be Proper
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 Allowance has issued. An Office action under Ex Parte Quayle (this is a legal proceeding, the details of which are not discussed […]
The post MPEP Q & A 121: Times When a Request for Continuing Examination May be Proper appeared first on Patent Education Series.
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4min

FAQs about Patent Bar MPEP Q & A Podcast:

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

The podcast currently has 460 episodes available.

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