Editorial Staff

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…

Question: What are the application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees? Answer: Application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees are…

Question: Can social media websites like Facebook be a source of prior art? Answer: Social media websites on the Internet, such as YouTube, Twitter, Facebook, and public forum posts, can be a source of prior art, provided the public accessibility…

Question: What are the types of papers that may be filed and processed electronically? Answer: Registered users may use EFS-Web to submit web-based documents such as ePetitions, Requests for Withdrawal as Attorney or Agent of Record, and eTerminal Disclaimers. EFS-Web…

Question: When does a Markush claim contain an ‘improper Markush grouping’? Answer: A Markush claim contains an “improper Markush grouping” if either: (1) the members of the Markush group do not share a “single structural similarity” or (2) the members…

Question: When may the claims of a new application be finally rejected in the first Office action? Answer: The claims of a new application may be finally rejected in the first Office action in those situations where: (A) the new…

Question: Who will be listed in the assignee section of a patent? Answer: The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or for…

Question: If the Office made a material mistake in a patent application publication that is apparent from the Office records and applicant wishes to correct the material mistake, applicant may file a request for corrected publication. What are the requirements…

Question: When is a rejection on the ground of lack of utility appropriate? Answer: A rejection on the ground of lack of utility is appropriate when: it is not apparent why the invention is “useful” because applicant has failed to…

Question: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification? Answer: Reasons, why the prior art element should not be considered an equivalent to the invention disclosed…