Patent Bar MPEP Q & A Podcast

By Lisa Parmley, USPTO Patent Practitioner #51006

Patent Bar Review... more

· Education

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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:

April 18, 2017 MPEP Q & A 86: Assignment of Patent to Change Address for Maintenance Fee Purposes

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 not result in a change of the “correspondence address” or “fee address” for maintenance fee purposes.
Chapter Details:
The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers maintenance fees.
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 2540 of the MPEP. The following is a brief summary of section 2540.
2540 Fee Address for Maintenance Fee Purposes
All notices will be directed to the correspondence address unless a “fee address” has been designated.
Maintenance fee reminders will be sent to the correspondence address used during the application prosecution unless a fee address is listed. Any assignments made will not receive any correspondence unless a change of correspondence address for the patent file has been sent in.
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3min
April 11, 2017 MPEP Q & A 85: Board on Deferring Action on a Petition for a Derivation Proceeding
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 expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is […]
The post MPEP Q & A 85: Board on Deferring Action on a Petition for a Derivation Proceeding appeared first on Patent Education Series.
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3min
April 11, 2017 MPEP Q & A 85: Board on Deferring Action on a Petition for a Derivation Proceeding

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 expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant.
Chapter Details:
The answer to this question can be found in the PTO supplement known as, “Derivation Proceeding Final Rules”. This supplement covers derivation proceedings. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.
Section Summary:
This question and answer comes from 35 U.S.C. 135(c). The following is a brief summary of 35 U.S.C. 135(c).
35 U.S.C. 135(c): Deferral of decision
The Board may defer action on a petition for derivation proceeding for up to three months after a patent is issued from the earlier application that includes a claim that is the subject of the petition.
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3min
April 04, 2017 MPEP Q & A 84: Division of Fees Between Practitioners Not in the Same Firm
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 if: The division is in proportion to the services performed by each practitioner or each practitioner assumes […]
The post MPEP Q & A 84: Division of Fees Between Practitioners Not in the Same Firm appeared first on Patent Education Series.
...more
3min
April 04, 2017 MPEP Q & A 84: Division of Fees Between Practitioners Not in the Same Firm

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 if:

* The division is in proportion to the services performed by each practitioner or each practitioner assumes joint responsibility for the representation;
* The client agrees to the arrangement, including the share each practitioner will receive, and the agreement is confirmed in writing; and
* The total fee is reasonable.

Chapter Details:
The answer to this question can be found in the PTO supplement known as, Changes to Representation of Others Before the USPTO Final Rules. This supplement covers the representation of others. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.
Section Summary:
This question and answer comes from 11.105.
11.105 covers fees.
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3min
March 28, 2017 MPEP Q & A 83: Filing a Petition to Institute a Post-Grant Review
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 real party-in-interest had already filed a civil action challenging the validity of a claim of the patent. A petition may not be […]
The post MPEP Q & A 83: Filing a Petition to Institute a Post-Grant Review appeared first on Patent Education Series.
...more
3min
March 28, 2017 MPEP Q & A 83: Filing a Petition to Institute a Post-Grant Review

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 real party-in-interest had already filed a civil action challenging the validity of a claim of the patent.
A petition may not be filed where the petitioner, the petitioner’s real party-in interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.
Chapter Details:
The answer to this question can be found in the PTO supplement known as, “Inter Partes, Post Grant, and Covered Business Method Review Final Rules”. This supplement covers New Trial Proceedings. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.
Section Summary:
This question and answer comes from section 42.201 of the supplement. The following is a brief summary of section 42.201.
New Trial: Post Grant Review
Section 42.201: Who may petition for a post-grant review.
Section 42.201 provides who may file a petition for post-grant review.
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3min
March 21, 2017 MPEP Q & A 82: Components International Design Applications Designating the U.S. Must Include
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 otherwise required for international design applications, an international design application designating the United States must also include: a claim; indications concerning the identity of the creator (i.e., the inventor); […]
The post MPEP Q & A 82: Components International Design Applications Designating the U.S. Must Include appeared first on Patent Education Series.
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4min
March 21, 2017 MPEP Q & A 82: Components International Design Applications Designating the U.S. Must Include

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 otherwise required for international design applications, an international design application designating the United States must also include:

* a claim;
* indications concerning the identity of the creator (i.e., the inventor); and
* the inventor’s oath or declaration.

Chapter Details:
The answer to this question can be found in chapter 2900 of the MPEP. This chapter covers International Design Applications.
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 2909 of the MPEP. The following is a brief summary of section 2909.
2909 Contents of the International Design Application
This section covers the contents of an international design application. The elements of an international design application fall into three categories:
(1) mandatory contents which include items required in all international design applications.
(2) additional mandatory contents which include elements that are required by certain Contracting Parties and therefore are mandatory in any international design application that designates such Contracting Parties.
(3) optional contents which are items that may be included in an international design application.
Further details on the specific contents of an international design application are discussed here. In addition, this section also discusses contents that are required where the United States is designated.
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4min
March 14, 2017 MPEP Q & A 81: Items Applicant’s Must Establish Under 35 USC 156
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 before an application under 35 U.S.C. 156(d) was filed (this may be an application for patent term extension under subsection (d)(1) or an application for interim extension […]
The post MPEP Q & A 81: Items Applicant’s Must Establish Under 35 USC 156 appeared first on Patent Education Series.
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5min

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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