Ted is an IP attorney and partner at Berkeley Law & Technology Group LLP, headquartered in Portland, Oregon. He has worked in the field of intellectual property law since 2001. The following is his Q & A interview. How did…
Question: When may an abandoned application be used as prior art? Answer: An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent [application] is reference[d] in…
Covid-19 has caused enormous stress and trauma to our society and unfortunately, the strain doesn’t seem like it will end in 2020. I very much hoping that things will start to look up in 2021, but depending on when in…
Question: What is the executive summary of the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’? Answer: This final rule amends the existing consolidated set of rules relating to the United…
The USPTO changed the source materials of the Patent Bar exam starting October 13th, 2020. Our course includes the newest updates. Fortunately, the Patent Bar exam is still tested over the same version of the MPEP which is the…
Question: Does a copy of an oath or declaration from a prior application need to be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012 even if the oath or…
Start Preparing for the Exam As Far Ahead of Time As You Can Giving yourself as much time to prepare for the exam as you can help keep your stress level at a minimum. By planning ahead, you’ll have time…
Question: Is it possible to file a petition to make an application special without a fee? Answer: A petition to make an application special may be filed without a fee if the basis for the petition is: (1) The applicant’s…
Taking notes is essential for achieving academic success, yet few people know how to do it well. Note-taking is an excellent way for any student to improve their grades. Anyone who plans on taking the patent bar exam would be…
Question: When can a practitioner enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client? Answer: A practitioner shall not enter into a business transaction with a…
The basic resume formula hasn’t changed much over the years: it includes your work experience, your education, and your most relevant skills and accomplishments. But the objective statement, which has sat at the top of resumes for decades, might have…
Question: What are the requirements for an applicant to rescind a nonpublication request? Answer: The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublication request must: Identify the application to which it is directed;…
In the United States alone, anxiety is considered the single most common mental illness. Yet while only 18 percent of the adult population suffers from anxiety, it’s estimated that a staggering 60 percent of college students deal with debilitating fear…
Question: What is the meaning of claims limited to species? Answer: Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited to a single disclosed embodiment (i.e., a single species, and…
As 3D printing gains popularity, a debate rages about whether patent protection is beneficial for the technology. This fact matters for the industry because several patents are expiring, and companies are filing for new ones at a rapid pace. 3D…
Question: What is the definition of a national application as described in chapter 200 of the MPEP? Answer: A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under…
When preparing for your move to patent law, it is crucial that you get the most out of your study time. But most students simply read the textbook and try to remember what they have read, which is not a…
Question: Should a dependent claim that does not specify a further limitation of the subject matter claimed be rejected under 35 USC 112(d)? Answer: Yes, a dependent claim that does not specify a further limitation of the subject matter claimed…
Going in for a job interview is always nerve-racking. While preparing and considering all the details, it can be easy to lose sight of what a job interview is: a conversation with a potential employer where you must sell yourself…
Question: What should an examiner’s answer in an appeal include? Answer: An examiner’s answer should include, under appropriate headings, in the order indicated, the following items: (1) Grounds of Rejection to be Reviewed on Appeal. A statement that every ground…
Question: Is a drawing an essential element of a design patent application? Answer: Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of…
According to the Oxford dictionary, one definition of confidence is “a feeling of self-assurance arising from an appreciation of one’s abilities or qualities.” Confidence is one of the most essential qualities to have and show during a job interview. However,…
Question: When is a drawing usually not considered necessary for the understanding of an invention under 35 USC 113 (first sentence)? Answer: It has been USPTO practice to treat an application that contains at least one process or method claim…
Struggling in school is nothing to feel bad about. It happens to millions of students. But with concerted effort, it’s possible to improve grades significantly. It All Starts With a Good Attitude Approaching studies with a positive mindset helps you…
Question: What is the difference between applicant information, correspondence information, and application information? Answer: Applicant information includes the name, residence, mailing address, and citizenship of each applicant ( when dealing with pre-AIA 37 CFR 1.41(b)). The name of each applicant…
Question: What does the Office need at the time of receipt in order to accord the international filing date the date of receipt of the international application? Answer: The receiving Office shall accord as the international filing date the date…
The last half-decade has been a remarkable time for innovation and inventions. Consider the following breakthroughs that hit the scene from 2015 to 2020. These notable inventions are helping people improve their lives. The Levitating Lightbulb If you want a…
Question: What must a petition for an unintentionally delayed claim be filed with? Answer: A petition for an unintentionally delayed claim must be accompanied by: (A) the reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior…
Tailoring your cover letter for each job you apply to adds a bit of time to the application process, but yields excellent results. Customization means personalizing the message to the recipient, which makes you stand out from your competitors. Appeal…
Question: How can petitions to withdraw an application from issue under 37 CFR 1.313(c) be sent to the USPTO? Answer: Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be: (A) mailed to “Mail Stop Petition, Commissioner…
