MPEP Q & A 161: Living Subject Matter and Patent Protection

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Question:

Is it true that living subject matter with markedly different characteristics from any found in nature, such as the claimed bacterium produced by genetic engineering, are excluded from patent protection by 35 U.S.C. 101?

Answer:

No, it is not true. For example, the Federal Circuit has indicated that “discoveries that possess ‘markedly different characteristics from any found in nature,’ … are eligible for patent protection.”

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 2105  of the MPEP.  The following is a brief summary of section 2105.

2105 Patent Eligible Subject Matter — Living Subject Matter

This section covers living subject matter, providing examples of what can be and cannot be patentable. For example, new minerals discovered in the earth are not patentable, but microorganisms produced by genetic engineering can be patented. In addition, it gives specifics on how no patent may issue on a claim directed to or encompassing a human organism, which was added in the America Invents Act (AIA).

MPEP Q & A 160: Rules for Appellant to Request to Reopen Prosecution

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Question:

Can an Appellant request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection?

Answer:

No, an appellant cannot request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection.

Chapter Details:

The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers appeals.

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 1207.03(b)  of the MPEP.  The following is a brief summary of section 1207.03(b).

1207.03(b) Petition to Designate a New Ground of Rejection and to Reopen Prosecution

This section covers the petition to designate a new ground of rejection and to reopen prosecution. 37 CFR 41.40 sets forth the exclusive procedure for an appellant to request review of the primary examiner’s failure to designate a rejection as a new ground of rejection via a petition to the Director under 37 CFR 1.181.

This procedure should be used if an appellant feels an answer includes a new ground of rejection that has not been designated as such and wishes to reopen prosecution so that new amendments or evidence may be submitted in response to the rejection.

MPEP Q & A 159: What are the Two Criteria for Subject Matter Eligibility?

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Question:

What are the two criteria for subject matter eligibility?

Answer:

First, the claimed invention must be in one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter.

Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called “judicially recognized exceptions” or simply “exceptions”) are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature).

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 of the MPEP.  The following is a brief summary of section 2106.

2106 Patent Subject Matter Eligibility

This section discusses the two criteria for subject matter eligibility which are; that the claimed invention must be in one of the four statutory categories and that the claimed invention must also qualify as patent-eligible subject matter. It also covers details of the broadest reasonable interpretation (BRI) including that the BRI of the claim must be established prior to examining a claim for eligibility. Lastly, there is a summary of the patent subject matter eligibility analysis and a flowchart outlining the steps.

MPEP Q & A 158: Can Maintenance Fees be Paid in Cash?

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Question:

Can maintenance fees be paid in cash?

Answer:

Maintenance fees may not be paid in cash.

A maintenance fee may be paid:

  • 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 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 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 157: Ways a Patent May be Corrected or Amended

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Question:

Name two ways a patent may be corrected or amended.

Answer:

A patent may be corrected or amended in eight ways, namely by:

  1. reissue,
  2. the issuance of a certificate of correction which becomes a part of the patent,
  3. disclaimer,
  4. reexamination,
  5. supplemental examination,
  6. inter partes review,
  7. post grant review, and
  8. covered business method review

Chapter Details:

The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers correction of patents.

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 1401 of the MPEP.  The following is a brief summary of section 1401.

1401 Reissue

The provisions of 35 U.S.C. 251 which discusses the reissue of defective patents, permit the reissue of a patent in order to correct an error in the patent made without any deceptive intention and provide the criteria for the reissue patent.

MPEP Q & A 156: What is the Definition of Fundamental Economic Practices?

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Question:

What is the definition of fundamental economic practices?

Answer:

The courts have used the phrases “fundamental economic practices” or “fundamental economic concepts” to describe concepts relating to the economy and commerce, such as agreements between people in the form of contracts, legal obligations, and business relations.

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 2106.04(a)(2) of the MPEP.  The following is a brief summary of section 2106.04(a)(2).

2106.04(a)(2)    Examples of Concepts The Courts Have Identified As Abstract Ideas 

This section covers examples of concepts the courts have identified as abstract ideas. This includes fundamental economic practices which describe concepts relating to the economy and commerce, such as agreements between people in the form of contracts, legal obligations, and business relations. In addition, this section also covers certain methods of organizing human activity which describes concepts relating to interpersonal and intrapersonal activities and an idea of itself which describes an idea standing alone such as an uninstantiated concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper.” Lastly, this section also covers mathematical relationship formulas.

MPEP Q & A 155: Statutes That Grounds for Post-Grant Review May be Raised For

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Question:

List two statutes that grounds for post-grant review may be raised for.

Answer:

Grounds for post-grant review include grounds that could be raised under 35 U.S.C. 102 or 103 including those based on prior art consisting of patents or printed publications. Other grounds available for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement.

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 comes from the following supplement: Inter Partes, Post Grant, and Covered Business Method Review Final Rules.

MPEP Q & A 154: What Does the Broadest Reasonable Interpretation (BRI) Do?

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Question:

What does the broadest reasonable interpretation (BRI) do?

Answer:

The BRI sets the boundaries of the coverage sought by the claim and will influence whether the claim seeks to cover subject matter that is beyond the four statutory categories or encompasses subject matter that falls within the exceptions.

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 of the MPEP.  The following is a brief summary of section 2106.

2106 Subject Matter Eligibility

This section discusses the two criteria for subject matter eligibility which are; that the claimed invention must be in one of the four statutory categories and that the claimed invention must also qualify as patent-eligible subject matter. It also covers details of the broadest reasonable interpretation (BRI) including that the BRI of the claim must be established prior to examining a claim for eligibility. Lastly, there is a summary of the patent subject matter eligibility analysis and a flowchart outlining the steps.

 

MPEP Q & A 153: When Will a Practitioner be Responsible for Another Practitioner’s Violation of the USPTO Rules of Professional Conduct?

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Question:

When will a practitioner be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct?

Answer:

A practitioner shall be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct if:

  • The practitioner orders or, with knowledge of the specific conduct, ratifies the conduct involved; or
  • The practitioner is a partner or has comparable managerial authority in the law firm in which the other practitioner practices, or has direct supervisory authority over the other practitioner, and knows of the conduct at a time when its consequences can be avoided or mitigated but fails to take reasonable remedial action.

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. 11.501 which covers responsibilities of partners, managers, and supervisory practitioners.

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.