Question: What are the major differences between 35 U.S.C. 102(c) and the CREATE Act? Answer: The major differences between 35 U.S.C. 102(c) and the CREATE Act are the following: 35 U.S.C. 102(c)is keyed to the effective filing date of the claimed invention, while…
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…
Home > Patent Bar MPEP Breakdown > MPEP 2900 MPEP 2900 International Design Applications 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…
Home > Patent Bar MPEP Breakdown > MPEP 2800 MPEP 2800 Supplemental Examination 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…
Home > Patent Bar MPEP Breakdown > MPEP 2700 MPEP 2700 Patent Terms, Adjustments, and Extensions Brief Summary: This chapter discusses the intricacies involved with patent terms including how a term may be adjusted or extended. Key Terms: Duty…
Home > Patent Bar MPEP Breakdown > MPEP 2600 MPEP 2600 Optional Inter Partes Reexamination 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.…
Home > Patent Bar MPEP Breakdown > MPEP 2500 MPEP 2500 Maintenance Fees 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…
Home > Patent Bar MPEP Breakdown > MPEP 2400 MPEP 2400 Biotechnology 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…
Home > Patent Bar MPEP Breakdown > MPEP 2300 MPEP 2300 Interference and Derivation Proceedings 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…
Home > Patent Bar MPEP Breakdown > MPEP 2200 MPEP 2200 Citation of Prior Art and Ex Parte Reexamination of Patents Brief Summary: This chapter serves as a guide regarding the processing and filing of prior art citations and reexamination…
Home > Patent Bar MPEP Breakdown > MPEP 2100 MPEP 2100 Patentability 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…
Home > Patent Bar MPEP Breakdown > MPEP 2000 MPEP 2000 Duty of Disclosure 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…
Home > Patent Bar MPEP Breakdown > MPEP 1900 MPEP 1900 Protest 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…
Home > Patent Bar MPEP Breakdown > MPEP 1800 MPEP 1800 Patent Cooperation Treaty 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…
Home > Patent Bar MPEP Breakdown > MPEP 1700 MPEP 1700 Miscellaneous 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…
Home > Patent Bar MPEP Breakdown > MPEP 1600 MPEP 1600 Plant Patents 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…
Home > Patent Bar MPEP Breakdown > MPEP 1500 MPEP 1500 Design Patents Brief Summary: The details of design patents are discussed here. Design patents protect the way an article “looks” as opposed to how an article “works” (which is…
Home > Patent Bar MPEP Breakdown > MPEP 1400 MPEP 1400 Correction of Patents Brief Summary: A reissue application may be filed to correct an error made without any deceptive intent in the original patent. In order to qualify for…
Home > Patent Bar MPEP Breakdown > MPEP 1300 MPEP 1300 Allowance and Issue Brief Summary: Once the decision to allow an application to patent has been made by the PTO, a Notice of Allowance will be sent out to…
Home > Patent Bar MPEP Breakdown > MPEP 1200 MPEP 1200 Appeal Brief Summary: An applicant may appeal to the Patent Trial and Appeal Board when he or she believes their application deserves to be allowed to patent in spite…
Home > Patent Bar MPEP Breakdown > MPEP 1100 MPEP 1100 Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions Brief Summary: Statutory invention registration (SIR) provided inventors with a means for placing their invention in the public domain…
Home > Patent Bar MPEP Breakdown > MPEP 1000 MPEP 1000 Matters Decided by Various U.S. Patent and Trademark Office Officials Brief Summary: An applicant dissatisfied with a decision made by the PTO may file either a petition to the…
Home > Patent Bar MPEP Breakdown > MPEP 900 MPEP 900 Prior Art, Search, Classification, and Routing Brief Summary: This chapter gives a basic overview for patent examiners on how to conduct a prior art search. The prior art section…
Home > Patent Bar MPEP Breakdown > MPEP 800 MPEP 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting Brief Summary: A restriction may occur when a single application claims two or more independent and distinct inventions within…
