MPEP Q & A 174: Submission Types that May Not be Filed Via EFS Web.

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Question:

List 2 submission types that may not be filed via EFS Web.

Answer:

The following is a list of submission types that are not permitted to be filed using EFS-Web:

  1. Plant patent applications and follow-on documents associated with plant patent applications, other than third party preissuance submissions.
  2. Requests for Reexamination for plant patents and documents associated with reexamination proceedings for plant patents.
  3. Requests for inter partes review.
  4. Any third party inquiries, petitions or papers unless specifically authorized by the EFS-Web Legal Framework (e.g., citation of prior art and written statements in patent files) and/or provided for via dedicated EFS-Web interface (e.g., Third Party Preissuance Submissions) is improper. Some examples of third party papers include inquiries into the timing of future actions on an application, disputes over inventorship in an application, and demands that the Office withdraw an application from issue on the basis of unpatentability of a claim.
  5. Color drawings and color photographs for international applications that have not entered the national stage.
  6. Initial submissions for patent term extension.
  7. Correspondence concerning registration practice.
  8. Certified documents.
  9. Correspondence to be filed in an application subject to a secrecy order.
  10. Documents filed in contested cases and trials before the Patent Trial and Appeal Board (PTAB), except as the PTAB may expressly authorize.
  11. Documents filed in contested cases and trials before the PTAB.
  12. Correspondence filed in connection with a disciplinary proceeding.
  13. Maintenance fees submitted that are not submitted with a petition. Patent owners may pay electronically using the proper methods for submitting maintenance fees.
  14. Assignment documents, which may be electronically filed using the Electronic Assignment System (EPAS) or the Electronic Trademark Assignment System (ETAS).
  15. Submissions that are not associated with a patent application, international design application, reexamination proceeding, or supplemental examination proceeding.

Chapter Details:

The answer to this question can be found in chapter 500 of the MPEP. This chapter covers receipt and handling of mail and papers.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 502.05 of the MPEP.  The following is a brief summary of section 502.05.

502.05 Correspondence Transmitted by EFS-Web

This section covers correspondence submitted through the EFS-Web, which is the PTO’s electronic filing system. Included is a discussion on what types of documents may be submitted through EFS-Web, legal policies, acknowledgement receipts, pre-grant (18 month) publication requests, and policies on photographs and color drawings.

MPEP Q & A 173: What is a Complete Nonprovisional Application Comprised of?

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Question:

What is a complete nonprovisional application comprised of?

Answer:

A complete nonprovisional application comprises the following:

  • a specification, including claims,
  • drawings,
  • an oath or declaration,
  • the prescribed filing fee, search fee, examination fee and application size fee

Chapter Details:

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 from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 601 of the MPEP.  The following is a brief summary of section 601.

601 Content of Provisional and Nonprovisional Applications 

This section covers the guidelines for drafting a nonprovisional patent application including the contents for a complete nonprovisional application and the arrangement and contents of the specification. A nonprovisional application must include a specification, including claims, drawings (if necessary), an oath or declaration, and the prescribed fees.

This section also covers the guidelines for drafting a provisional application. A provisional application does not need claims and no oath or declaration is required.

MPEP Q & A 172: Fees that Must be Paid Upon Filing a Request for Prioritized Examination

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Question:

Name two fees that must be paid upon filing a request for prioritized examination.

Answer:

Upon filing the request for prioritized examination, the following fees must be paid for the application:

  • (1) the prioritized examination fee set forth in 37 CFR 1.17(c),
  • (2) the processing fee set forth in 37 CFR 1.17(i)(1),
  • (3) the publication fee set forth in 37 CFR 1.18(d),
  • (4) the basic filing fee set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c),
  • (5) the search fee set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m),
  • (6) the examination fee set forth in 37 CFR 1.16(o),
  • (7) if applicable, any excess claims fees due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h), and any excess claim fee due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i), and
  • (8) if applicable, any application size fee due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s).

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers examination of applications.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 708.02(b) of the MPEP.  The following is a brief summary of section 708.02(b).

708.02(b) Prioritized Examination

This section covers the details of prioritized examination. Included is a discussion on the requirements for requesting prioritized examination, prosecution of an application under prioritized examination, and the refund of the prioritized examination fee.

MPEP Q & A 171: Instances Where Publication or Issue Date is Later Than the Current Date

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Question:

When the publication or issue date is later than the current date (i.e., the date of the request), who will that information be given to?

Answer:

When the publication or issue date is later than the current date (i.e., the date of the request), such information may be given only to the applicant, an inventor, the assignee of record, or the attorney or agent of record.

Chapter Details:

The answer to this question can be found in chapter 100 of the MPEP. This chapter covers secrecy, access, national security, and foreign filing.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 101 of the MPEP.  The following is a brief summary of section 101.

101 General

Patent applications must be kept confidential. Approved patents, however, are freely open to the public (unless they are under a secrecy order).

There are 3 major types of patent status. These include pending applications, abandoned applications, and issued patents. 37 C.F.R. 1.14 discusses the rules regarding the confidentiality of an application’s status.

In addition, 37 C.F.R. 1.14 covers the confidentiality of patent applications in regards to instances when application status may be revealed to private parties within the public. 35 U.S.C. 122 states the specific times when patent related documents will be published by the PTO.

MPEP Q & A 170: Must a Claim be Identified to a Correct Category of Subject Matter?

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Question:

Must a claim be identified to a correct category of subject matter?

Answer:

It is not necessary to identify a single category into which a claim falls, so long as it is clear that the claim falls into at least one category. It is also not necessary to identify a “correct” category into which the claim falls, because although in many instances it is clear within which category a claimed invention falls, a claim may satisfy the requirements of more than one category.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2106.03 of the MPEP.  The following is a brief summary of section 2106.03.

2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter 

The four categories of statutory subject matter are; processes, machines, manufactures, and compositions of matter. This section covers each of the categories along with details on how to determine whether a claim fits in a statutory category.

MPEP Q & A 169: Non-Limiting Claims Not Directed to Any of the Statutory Categories.

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Question:

Provide an example of a non-limiting claim that is not directed to any of the statutory categories.

Answer:

Examples of a non-limiting claim that is not directed to any of the statutory categories include;

  • Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations;
  • Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave; and
  • Subject matter that the statute expressly prohibits from being patented, such as humans per se, which are excluded under The Leahy-Smith America Invents Act (AIA).

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2106.03 of the MPEP.  The following is a brief summary of section 2106.03.

2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter 

The four categories of statutory subject matter are; processes, machines, manufactures, and compositions of matter. This section covers each of the categories along with details on how to determine whether a claim fits in a statutory category.

MPEP Q & A 168: Competent Representation to a Client

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Question:

A practitioner shall provide competent representation to a client. What does competent representation to a client entail?

Answer:

Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation.

Chapter Details:

The answer to this question can be found in the following supplement: Changes to Representation of Others Before the USPTO Final Rules. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question and answer comes from the following supplement: Changes to Representation of Others Before the USPTO Final Rules. It specifically comes from 11.101 which covers Competence.

MPEP Q & A 167: When Must Applicants Timely File a Notice of Foreign Filing to Avoid Abandonment of a U.S. Application?

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Question:

Name one circumstance where applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application.

Answer:

Applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application if:

  • applicant filed a nonpublication request in the U.S. application filed under 35 U.S.C. 111(a);
  • applicant subsequently filed a foreign or international application directed to the invention disclosed in the U.S. application in a foreign country, or under a multilateral international agreement, that requires publication of applications 18 months after filing (foreign filing or counterpart application); and
  • applicant did not rescind the nonpublication request before filing the foreign or international application.

Chapter Details:

The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers statutory invention registration (SIR); pre-grant publication (PGPub) and preissuance submissions.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1124 of the MPEP.  The following is a brief summary of section 1124.

1124 Notice of Foreign Filing

This section covers the filing of a notice of foreign filing. The notice of foreign filing must be filed not later than 45 days after the filing date of the counterpart application or the application will become abandoned.

MPEP Q & A 166: Further Written Opinion Established by the International Preliminary Examining Authority

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Question:

Name one item any further written opinion established by the International Preliminary Examining Authority should set forth.

Answer:

Any further written opinion established by the International Preliminary Examining Authority should set forth, as applicable:

  • (A) Any defects in the international application concerning subject matter which is not required to be examined or which is unclear or inadequately supported;
  • (B) Any negative findings with respect to any of the claims because of a lack of novelty, inventive step (non-obviousness) or industrial applicability;
  • (C) Any defects in the form or contents of the international application;
  • (D) Any finding by the examiner that an amendment goes beyond the disclosure in the international application as originally filed;
  • (E) Any observation which the examiner wishes to make on the clarity of the claims, the description, the drawings or to the question whether the claims are fully supported by the description;
  • (F) Any decision by the examiner not to carry out the international preliminary examination on a claim for which no international search report was issued; or
  • (G) If the examiner considers that no acceptable nucleotide and/or amino acid sequence listing is available in a form that would allow a meaningful international preliminary examination to be carried out.

Chapter Details:

The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers the patent cooperation treaty.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1860 of the MPEP.  The following is a brief summary of section 1860.

1860 International Preliminary Examination Procedure

This section covers the procedure for international preliminary examination.  It also covers when a further written opinion should be prepared by the examiner. This includes times when applicant files a response which includes a persuasive argument that the written opinion issued by the International Searching Authority was improper because of a negative opinion with respect to a lack of novelty, inventive step (non-obviousness) or industrial applicability; and which results in the examiner considering any of the claims to lack novelty, inventive step (non-obviousness) or industrial applicability based on new art not necessitated by any amendment.

MPEP Q & A 165: When Patent Owner Fails to File Timely Response to Any Office Action Prior to an Action Closing Prosecution (ACP)

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Question:

List one consequence for when the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP).

Answer:

If the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP), it will result in the following consequences:

  • Where there were no claims found patentable in the Office action, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) terminating prosecution and indicating the status of the claims as canceled.
  • Where at least one claim is found patentable, all future prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which do not expand the scope of the claim(s) found patentable at that time.
  • The patent owner will not be permitted to add claims broader in the scope than the patentable claims which remain in the proceeding at the time of the patent owner’s failure to timely respond.
  • The examiner will proceed to issue an ACP indicating that:
    • Any claims under rejection or objection are withdrawn from consideration and will be canceled upon publication of the certificate; and
    • Prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which do not expand the scope of the claim(s) found patentable at that time.

Chapter Details:

The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers optional inter partes reexamination.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2666.10 of the MPEP.  The following is a brief summary of section 2666.10.

2666.10 Patent Owner Does Not Respond to Office Action  

This section covers instances when the patent owner does not respond to an Office action. The consequences are outlined for when a patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP) and where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed.