Question: When an examiner concludes that no substantial new question of patentability has been raised, they will prepare a decision denying the reexamination request. What will that request indicate for each patent and printed publication cited in the request? Answer: If the examiner concludes that no substantial new question of patentability has been raised, the […]

The post MPEP Q & A 314: What will the request indicate for each patent and printed publication cited in the request? appeared first on Patent Education Series.

Question: Once the issue fee has been paid, list two reasons why the Office will withdraw the application from issue at its own initiative. Answer: Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except: (1) A mistake on the part […]

The post MPEP Q & A 313: Reasons why the Office will withdraw the application from issue. appeared first on Patent Education Series.

Question: List two General Plastic non-exclusive factors. Answer: The General Plastic non-exclusive factors include the following: Whether the same petitioner previously filed a petition directed to the same claims of the same patent; Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition […]

The post MPEP Q & A 312: List two General Plastic non-exclusive factors. appeared first on Patent Education Series.

Question: List two requirements for a petition for suspension of action under 37 CFR 1.103(a). Answer: A petition for suspension of action under 37 CFR 1.103(a) must: (A) be presented as a separate paper; (B) be accompanied by the petition fee set forth in 37 CFR 1.17(g); (C) request a specific and reasonable period of suspension not greater than […]

The post MPEP Q & A 311: Two requirements for a petition for suspension of action under 37 CFR 1.103(a) appeared first on Patent Education Series.

Question: Name a situation that does not constitute a license so as to prohibit claiming small entity status by a person. Answer: The following situations do not constitute a license so as to prohibit claiming small entity status by a person: a use license to the Government resulting from a rights determination under Executive Order […]

The post MPEP Q & A 346: Situations that do not constitute a license to prohibit claiming small entity status by a person. appeared first on Patent Education Series.

Question: The three-month period in 37 CFR 1.704(b) applies to the Office notices and letters issued as part of the pre-examination processing of an application (except a Notice of Omitted Items in a Nonprovisional Application as discussed above). List two examples of these notices. Answer: These notices include: A Notice of Incomplete Nonprovisional Application (except as to […]

The post MPEP Q & A 310: List two examples of notices issued as part of the pre-examination processing of an application appeared first on Patent Education Series.

Question: List two requirements for adding a “Sequence Listing” after the application filing date? Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text file submitted via the USPTO patent electronic […]

The post MPEP Q & A 309: List two requirements for adding a “Sequence Listing” after the application filing date? appeared first on Patent Education Series.

Question: What type of arguments should a patent owner preliminary response include? Answer: A patent owner preliminary response may include one or more of the following arguments: The petitioner is statutorily barred from pursuing a review; The references asserted to establish that the claims are unpatentable are not in fact printed publications; The prior art […]

The post MPEP Q & A 308: What type of arguments should a patent owner preliminary response include? appeared first on Patent Education Series.

Question: When are electronic means or medium for filing IDSs permitted? Answer: As shown in chapter 600 … Electronic means or medium for filing IDSs are not permitted except for: IDSs electronically submitted using the USPTO patent electronic filing system; or copies of large tables, computer program listings, and sequence listings submitted as a PDF […]

The post MPEP Q & A 307: When are electronic means or medium for filing IDSs permitted? appeared first on Patent Education Series.

Question: Where a petitioner files a motion to seal with the petition that seeks entry of a protective order other than the default protective order, a patent owner may only access the sealed confidential information prior to the institution of the trial by which options? Answer: Where a petitioner files a motion to seal with […]

The post MPEP Q & A 306: Sealed confidential information prior to the institution of the trial by which options? appeared first on Patent Education Series.