Question: All substantive communications with the Board regarding a proceeding must include all parties to the proceeding, except as otherwise authorized. What does the prohibition on ex parte communications not extend to? Answer: All substantive communications with the Board regarding…
Question: What is the difference between sequence listing requirements filed before or after July 1, 2022? Answer: For applications filed before July 1, 2022, the sequence listing can be a “Sequence Listing” (as an ACSII plain text file in compliance…
Question: What should a motion to exclude evidence include? Answer: A motion to exclude evidence should: (a) Identify where in the record the objection originally was made; (b) Identify where in the record the evidence sought to be excluded was…
Question: A “Sequence Listing XML” may be submitted as a XML file with a “.xml” extension via the USPTO patent electronic filing system or as read-only optical discs. What does such a submission require? Answer: Such submission requires that applicant…
Question: List two exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate. Answer: Exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate: (A) Adding or correcting a claim to a prior application…
Question: List the criteria for “Large Tables” that may be submitted in electronic form in ASCII plain text. Answer: “Large Tables” that may be submitted in electronic form in ASCII plain text are: any individual table that is more than…
Question: Which of the following new trial proceedings can the patent owner file a preliminary response for? Answer: The patent owner is afforded an opportunity to file a preliminary response for inter partes review (IPR), postgrant review (PGR), and covered…
International Design Applications Quick Statistics: Number of Pages: 55 pgsSections: 2901 – 2950 Brief Summary: This chapter was new as of the 9th Edition 07.2015. It covers details on International Design Applications. A single International Design Application may be filed…
Supplemental Examination Quick Statistics: Number of Pages: 65 pgsSections: 2801 – 2823 Brief Summary: Chapter 2800 provides guidance on Supplemental Examination, which was created by the Leahy-Smith America Invents Act (AIA) effective September 16, 2012. Supplemental examination provides a patent…
Patent Terms, Adjustments, and Extensions Quick Statistics: Number of Pages: 93 pgsSections: 2701 – 2766 Brief Summary: This chapter discusses the intricacies involved with patent terms including how a term may be adjusted or extended. Key Terms: Patent Term…
Optional Inter Partes Reexamination Quick Statistics: Number of Pages: 176 pgsSections: 2601 – 2696 Brief Summary: This chapter discusses inter partes reexamination proceedings. These involve the initiator of the reexamination as well as the patent holder and an examiner. Many…
Maintenance Fees Quick Statistics: Number of Pages: 33 pgsSections: 2501 – 2595 Brief Summary: Maintenance fees must be paid on all utility applications filed after December 12, 1980. Maintenance fees are not required on design or plant patents. The fees…
Biotechnology Quick Statistics: Number of Pages: 114 pgsSections: 2401 – 2435 Brief Summary: The biotechnology chapter focuses on the rules for biological deposits and sequences. Due to the nature of biological based inventions, it may not always be sufficient for…
Interference and Derivation Proceedings Quick Statistics: Number of Pages: 29 pgsSections: 2301 – 2315 Brief Summary: An interference is a proceeding that is held before the Patent Trial and Appeal Board to determine who should receive the right to a…
Citation of Prior Art and Ex Parte Reexamination of Patents Quick Statistics: Number of Pages: 199 pgsSections: 2201 – 2296 Brief Summary: This chapter serves as a guide regarding the processing and filing of prior art citations and reexamination requests.…
Patentability Quick Statistics: Number of Pages: 524 pgsSections: 2101 – 2190 Brief Summary: Determining whether specific subject matter is patentable is a very difficult task. Therefore, the PTO has many rules and guidelines used to help sort out this dilemma.…
Duty of Disclosure Quick Statistics: Number of Pages: 22 pgsSections: 2000 – 2022 Brief Summary: This chapter deals with the duties of disclosure. Each inventor and every other individual who is substantially involved in the preparation or prosecution of the…
Protest Quick Statistics: Number of Pages: 12 pgsSections: 1901 – 1920 Brief Summary: If any member of the public becomes aware of a pending application which he or she believes should not gain patent status, that individual has the right…
Patent Cooperation Treaty Quick Statistics: Number of Pages: 199 pgsSections: 1801 – 1896 Brief Summary: A Patent Cooperation Treaty (PCT) application enables a U.S. applicant to file one international application (known as the international phase) to the U.S. and have…
Miscellaneous Quick Statistics: Number of Pages: 12 pgsSections: 1701 – 1730 Brief Summary: This chapter discusses several miscellaneous topics such as the restrictions placed on former examiners aiding in the writing or prosecution of a patent application. It also outlines…
Plant Patents Quick Statistics: Number of Pages: 13 pgsSections: 1601 – 1613 Brief Summary: This chapter provides an overview of plant patents. Note that these patents will only be granted for certain plants. One of the major criteria for a…
