Editorial Staff

Question: What is the second part of the Alice/Mayo test often referred to as? Answer: The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. An inventive concept “cannot be furnished by the unpatentable law…

Question: How do examiners evaluate integration into a practical application? Answer: Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional…

Question: How is the markedly different characteristics analysis performed? Answer: The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function,…

Question: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind. Answer: Examples of claims that do not recite mental processes because they cannot be practically performed in…

Question: What is meant by a fundamental economic practice or principle? Answer: The courts have used the phrases “fundamental economic practices” or “fundamental economic principles” to describe concepts relating to the economy and commerce. Fundamental economic principles or practices include…

Question: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time? Answer: The inventive entity for a particular application is based on some contribution to at least one of…

Question: What type of applications and proceedings may submit photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings via EFS-Web? Answer: Photographs, color drawings, grayscale drawings, and other drawings that are not black…

Question: When do members of a Markush group share a ‘single structural similarity’? Answer: Members of a Markush group share a “single structural similarity” when they belong to the same recognized physical or chemical class or to the same art-recognized…

Question: What must a statement under 37 CFR 1.97(e) state? Answer: A statement under 37 CFR 1.97(e) must state either; that each item of information contained in the information disclosure statement was first cited in any communication from a foreign…

Question: What must a claim in dependent form contain? Answer: A claim in dependent form shall contain: (i) a reference to a claim previously set forth, and (ii) then specify a further limitation of the subject matter claimed. Chapter Details:…

Question: When the online fee payment in EFS-Web is unavailable, what types of submissions cannot be filed via EFS-Web, since online fee payment must accompany the submission? Answer: When the online fee payment in EFS-Web is unavailable, the following types…

Question: What are the benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) rather than requesting conversion? Answer: Claiming the benefit of the provisional application under 35 U.S.C.…

Question: What are examples of situations where ownership must be established? Answer: Examples of situations where ownership must be established are when the assignee who is not the applicant: signs a request for status of an application or gives a…

Question: What happens if a claim for foreign priority is presented after the time period set in 37 CFR 1.55? Answer: If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be…

Question: What are the enumerated groupings of abstract ideas defined as? Answer: The enumerated groupings of abstract ideas are defined as: 1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations; 2) Certain methods of organizing human activity…

Question: When is a protest considered timely? Answer: A protest is timely if (1) filed prior to the date the application was published under 37 CFR 1.211 or the date a notice of allowance was given or mailed, whichever occurs first, or (2)…

Question: If a published patent application is pending and it is not maintained in the IFW system, will the paper application file itself be available to the public for inspection? Answer: Published applications maintained in the IFW system are available…

Question: How is the effective filing date of a claimed invention determined? Answer: The effective filing date of a claimed invention is determined on a claim-by-claim basis. Chapter Details: The answer to this question can be found in chapter 2100…

Question: How can correspondence filed via the Office electronic filing system be signed? Answer: Correspondence filed via the Office electronic filing system may be signed by a graphic representation of a handwritten signature, or a graphic representation of an S-signature.…

Question: Who may the substitute statement be signed by for a juristic entity? Answer: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application. The answer is…

Question: List two reasons why an international application filed with, or forwarded to, the International Bureau would not need a foreign filing license. Answer: An international application filed with, or forwarded to, the International Bureau must have a foreign filing…

Question: If the maintenance fee is due prior to the issuance of a reissue patent, what will paying the maintenance fee maintain? Answer: If the maintenance fee is due prior to the issuance of a reissue patent, the maintenance fee…

Question: What is an example of a situation that does not define “substantial utilities”: Answer: The following are examples of situations that do not define “substantial utilities”: (A) Basic research such as studying the properties of the claimed product itself…

Question: Can a patent owner avoid double patenting by disclaiming the earlier patent? Answer: “[A] patent owner cannot avoid double patenting by disclaiming the earlier patent.” Chapter Details: The answer to this question can be found in chapter 800 of…

Question: List two concepts and products the courts have identified as examples of laws of nature or natural phenomena. Answer: The courts have identified the following concepts and products as examples of laws of nature or natural phenomena: isolated DNA, Ass’n…

Question: Name one example of non-limiting claims not directed to any of the statutory categories. Answer: Non-limiting examples of claims that are not directed to any of the statutory categories include: Products that do not have a physical or tangible…

Question: Who is the applicant for a patent? Answer: The applicant for patent is all parties identified as the applicant under 37 CFR 1.42(a). Where the applicant is all of the joint inventors under 37 CFR 1.45, one or more of the…

Question: What is a mathematical relationship? Answer: A mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words or using mathematical symbols. For example, pressure (p) can be described as the ratio between…

Question: How can patent applications be sent to the U.S. Patent and Trademark Office? Answer: All applications (provisional and nonprovisional) may be sent to the U.S. Patent and Trademark Office by mail using the United States Postal Service, or they…