MPEP Q & A 21: Request for Reinstatement of All or Part of the Period of Adjustment

Question: What must a request for reinstatement of all or part of the period of adjustment reduced for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request include? Answer: A […]

MPEP Q & A 20: Details of Substantial New Question of Patentability

Question: What should a substantial new question of patentability not be based upon? Answer: A substantial new question cannot be based upon: prior art expressly relied upon by the examiner during the prosecution prior art which was actually discussed Chapter Details: The answer to this question can be found in chapter 2200 of the MPEP. […]

MPEP Q & A 19: Items a Protestor Must Give the PTO

Question: What must a protestor give the PTO? Answer: A protestor must give the PTO: a listing of the patents, publications or other information relied upon a copy of each item listed a translation of non-English papers a concise explanation of the relevance of the references proof of service to the applicant Chapter Details: The […]

MPEP Q & A 18: Duty to Disclose

Question: Who has a duty to disclose? Answer: The following individuals have a duty to disclose: each inventor each registered practitioner each assignee every other person who is substantially involved in the preparation or prosecution of the application the duty does not extend to typists, clerks, and similar personnel the duty does not extend to […]

MPEP Q & A 17: Plants That are Not Patentable

Question: Name two types of plants that are not patentable. Answer: All plants are patentable except: bacteria those that are tuber propagated plants that are not invented or discovered in a cultivated state and asexually reproduced plants that are not obvious Chapter Details: The answer to this question can be found in chapter 1600 of […]

MPEP Q & A 16: Signature Required for Disclaimer in Patent or Reexamination Proceeding

Question: Who must a disclaimer be signed by in a patent or a reexamination proceeding? Answer: A disclaimer filed in a patent or a reexamination proceeding must be signed by either: the patentee (the assignee, the inventor(s) if the patent is not assigned, or the assignee and the inventors if the patent is assigned-in-part), or […]

MPEP Q & A 15: Procedural Step for International Applications Going Through the International Searching Authority

Question: List one procedural step that all international applications go through in the International Searching Authority. Answer: The main procedural steps that any international application goes through in the International Searching Authority are: the making of the international search, the preparing of the international search report and for international applications having an international filing date […]

MPEP Q & A 14: Request for Simultaneous Issue

Question: What must a request for simultaneous issue contain? Answer: The request must contain the following information about each allowed application for which simultaneous issue is requested; application number, filing date, name(s) of inventor(s), title of invention, and date of allowance. Chapter Details: The answer to this question can be found in chapter 1300 of […]

MPEP Q & A 13: Term of Utility vs. Design Patent

Question: What is the term of a utility patent versus the term of a design patent? Answer: The term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from the U.S. filing date; or if the application contains a specific reference to an earlier application, 20 […]

MPEP Q & A 12: Two Separate and Distinct Requirements for 35 U.S.C. 112(b)

Question: What are the two separate and distinct requirements of 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph? Answer: 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph contains two separate and distinct requirements: The first one is that the claim(s) set forth the subject matter applicants regard as the invention, and […]