MPEP Q & A 152: Information an Attorney of Record May Have to Submit in Reply to an Office Action, Reissue Application, or Reexamination Proceeding

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Question:

An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding. List 2 different types of information this may include.

Answer:

An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding; this information includes:

  • Information used in the inventive process, such as:
    • A copy of non-patent literature,
    • A publication application, or
    • A patent used in the inventive process
  • The publication date of an undated document mentioned by the applicant which may qualify as a prior art publication.
  • Comments on a new decision by the Federal Circuit that is relevant to the examination of the application.

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 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 704.11  of the MPEP.  The following is a brief summary of section 704.11.

704.11 What Information May Be Required

This section discusses what information may be required in a requirement for information.

MPEP Q & A 151: Situations Where a Practitioner May Withdraw From Representing a Client According to 37 C.F.R. 11.116

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Question:

List two situations where a practitioner may withdraw from representing a client according to 37 C.F.R. 11.116.

Answer:

A practitioner may withdraw from representing a client if:

  • Withdrawal can be accomplished without material adverse effect on the interests of the client;
  • The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent;
  • The client has used the practitioner’s services to perpetrate a crime or fraud;
  • A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement;
  • The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner’s services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled;
  • The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or
  • Other good cause for withdrawal exists.

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 37 C.F.R. 11.116 which covers declining or terminating representation.

MPEP Q & A 150: Triggering of On-Sale Bar of Pre-AIA 35 U.S.C. 102(b)

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Question:

When is the on-sale bar of pre-AIA 35 U.S.C. 102(b) triggered?

Answer:

The on-sale bar of pre-AIA 35 U.S.C. 102(b) is triggered if the invention is both:

  • The subject of a commercial offer for sale not primarily for experimental purposes and
  • Ready for patenting.

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 07.2015. 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 2133.03(b) of the MPEP.  The following is a brief summary of section 2133.03(b).

2133.03(b) “On Sale”

This section covers the ‘on sale’ bar of pre-AIA 35 U.S.C. 102(b). The on-sale bar is triggered if the invention is both the subject of a commercial offer for sale not primarily for experimental purposes and is ready for patenting. This section discusses the meaning of ‘sale’, offers for sale, sale by inventor, assignee or others associated with the inventor in the course of business, and sales by independent third parties.

MPEP Q & A 149: Four Categories of Invention Recited in 35 U.S.C. 101

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Question:

What are the 4 categories of invention recited in 35 U.S.C. 101?

Answer:

The four categories of invention recited in 35 U.S.C. 101 are: process, machine, manufacture, or composition of matter.

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 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 706 of the MPEP.  The following is a brief summary of section 706.

706 Rejection of Claims

This section describes some of the various reasons why an examiner may reject the claims of an application and how the applicant can overcome these rejections.

The requirements for patentability include patent eligible, useful, novel, nonobvious, enabled, and clearly described. These criteria are outlined in 35 U.S.C. 101, 102, 103, and 112 and will determine the basis of an examiner’s rejection of the claims at any time during the prosecution of the application.

35 U.S.C. 101 deals with what is patentable. If the disclosed subject matter is not a process, manufacture, machine or composition of matter made by man, and/or it has no utility, it will be rejected under 35 U.S.C. 101.

35 U.S.C. 102 discusses the conditions for patentability; novelty and the loss of the right to patent. The 102 laws state that the inventor listed on an application will be granted a patent unless he or she was not the first to invent the subject matter.

35 U.S.C. 103 relates to the obviousness of the subject matter. If the invention is found to be obvious in relation to the prior art, the applicant will not be granted a patent.

35 U.S.C. 112 relates to the description of the subject matter. If the patent application does not meet the standards outlined in 35 U.S.C. 112, it will be rejected.

This section includes a brief discussion on the uniform application of the patentability standard, defects in form or omission of a limitation, patentable subject matter disclosed but not claimed, and reconsideration of claims after reply by applicant.

MPEP Q & A 148: The Duty of Disclosure in Reexamination Proceedings

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Question:

Who does the duty of disclosure in reexamination proceedings apply to?

Answer:

The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual who is substantively involved on behalf of the patent owner.

Chapter Details:

The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers Citation of Prior Art and Ex Parte Reexamination of Patents.

The answer is from the 9th Edition, Revision 07.2015. 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 2280 of the MPEP.  The following is a brief summary of section 2280.

2280 Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302

A prima facie case of unpatentability of a claim pending in a reexamination proceeding is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability. This section covers further information material to patentability in reexamination proceedings.

MPEP Q & A 147: Post-Grant Reviews and Civil Actions

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Question:

Can a post-grant review be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent?

Answer:

No, a post-grant review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent.

Chapter Details:

The answer to this question can be found in the following supplement: Inter Partes, Post Grant, and Covered Business Method Review 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: Inter Partes, Post Grant, and Covered Business Method Review Final Rules. It specifically comes from 35 U.S.C. 325. Here’s a quick summary of this statute:

35 U.S.C. 325: Relation to other proceedings or actions.

35 U.S.C. 325 covers the relation to other proceedings or actions.

MPEP Q & A 146: When Can a Combination as Claimed Show that Inventions are Distinct?

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Question:

When can a combination as claimed show that inventions are distinct?

Answer:

Inventions are distinct if it can be shown that a combination as claimed:

  • (A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and
  • (B) the subcombination can be shown to have utility either by itself or in another materially different combination.

When these factors cannot be shown, such inventions are not distinct.

Chapter Details:

The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 806.05(c) of the MPEP.  The following is a brief summary of section 806.05(c).

806.05(c) Criteria of Distinctness Between Combination and Subcombination

The inventions are distinct if it can be shown that a combination as claimed:

  • (A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and
  • (B) the subcombination can be shown to have utility either by itself or in another materially different combination.

When these factors cannot be shown, such inventions are not distinct.

MPEP Q & A 145: Methods For Paying a Maintenance Fee

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Question:

How can a maintenance fee be paid?

Answer:

A maintenance fee may be paid:

  • with cash
  • with Treasury notes
  • with national bank notes
  • with post office money orders
  • with certified checks
  • over the internet by electronic funds transfer (EFT), credit card, or deposit account payment methods

Chapter Details:

The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers Maintenance Fees.

The answer is from the 9th Edition, Revision 07.2015. 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 2522 of the MPEP.  The following is a brief summary of section 2522.

2522 Methods of Payment

This section outlines the ways a maintenance fee may be paid. In addition, it covers instances when the payment will not be accepted (like, for instance, when the payment is less than the required amount).

MPEP Q & A 144: What Should a Subject Matter Eligibility Rejection Under Step 2 Do?

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Question:

What should a subject matter eligibility rejection under Step 2 do?

Answer:

A subject matter eligibility rejection under Step 2 should:

  • Identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception;
  • Identify any additional elements (specifically point to claim features/limitations/steps) recited in the claim beyond the identified judicial exception; and
  • Explain the reason(s) that the additional elements taken individually, and also taken as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception.

Chapter Details:

The answer to this question can be found in the following supplement: Memo dated May 4, 2016, Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection. 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: Memo dated May 4, 2016, Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection.

MPEP Q & A 143: Who Decides Petitions for Derivation and Conducts Any Ensuing Derivation Proceeding?

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Question:

Who decides petitions for derivation and conducts any ensuing derivation proceeding?

Answer:

The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensuing derivation proceeding.

Chapter Details:

The answer to this question can be found in the following supplement: Derivation Proceeding 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: Derivation Proceeding Final Rules.