MPEP Q & A 232: Can social media websites be a source of prior art?

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Question:

Can social media websites like Facebook be a source of prior art?

Answer:

Social media websites on the Internet, such as YouTube, Twitter, Facebook, and public forum posts, can be a source of prior art, provided the public accessibility requirements are met.

Not all information on social media is considered publicly accessible.

Public accessibility is determined on a case-by-case basis taking into consideration factors such as, where the information is posted, privacy restrictions placed on the posting, the length of time it was posted, and whether the information is indexed for searching.

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 10.2019. 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 2128 of the MPEP.  The following is a brief summary of section 2128.

2128 “Printed Publications” as Prior Art

This section outlines the details of printed publications as prior art. A reference is a printed publication if it is accessible to the public. It also covers electronic publications as prior art. Essentially, electronic publications are considered printed publications provided the publication was accessible to individuals concerned with the art to which the document relates. Regarding printed publications, one need not prove someone actually looked at a publication when that publication is accessible to the public through a library or patent office.

MPEP Q & A 231: Types of papers that may be filed and processed electronically

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Question:

What are the types of papers that may be filed and processed electronically?

Answer:

Registered users may use EFS-Web to submit web-based documents such as ePetitions, Requests for Withdrawal as Attorney or Agent of Record, and eTerminal Disclaimers.

EFS-Web permits registered users to file the following auto-processed ePetitions, requests, and eTerminal Disclaimers:

  • Request for withdrawal as attorney or agent;
  • Petition to withdraw an application from issue, with some restrictions;
  • Petition for revival of an application, with some restrictions;
  • eTerminal Disclaimers for nonprovisional utility applications; and
  • Petition to correct assignee after payment of Issue Fee.

Chapter Details:

The answer to this question can be found in chapter 500 of the MPEP. This chapter covers the Receipt and Handling of Mail and Papers.

The answer is from the 9th Edition, Revision 10.2019. 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 230: What is an ‘improper Markush grouping’?

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Question:

When does a Markush claim contain an ‘improper Markush grouping’?

Answer:

A Markush claim contains an “improper Markush grouping” if either:

  • (1) the members of the Markush group do not share a “single structural similarity” or
  • (2) the members do not share a common use.

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 10.2019. 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 2117 of the MPEP.  The following is a brief summary of section 2117.

2117 Markush Claims

A “Markush” claim recites a list of alternatively useable members. The listing of specified alternatives within a Markush claim is referred to as a Markush group or Markush grouping. This section delves deeper into Markush claims.

MPEP Q & A 229: When are the claims of a new application finally rejected in the first Office action?

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Question:

When may the claims of a new application be finally rejected in the first Office action?

Answer:

The claims of a new application may be finally rejected in the first Office action in those situations where:

  • (A) the new application is a continuing application of, or a substitute for, an earlier application, and
  • (B) all claims of the new application:
    • (1) are either identical to or patentably indistinct from the claims in the earlier application (in other words, restriction would not have been proper if the new or amended claims had been entered in the earlier application), and
    • (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier 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 10.2019. 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 706.07(b) of the MPEP.  The following is a brief summary of section 706.07(b).

706.07(b)   Final Rejection, When Proper on First Action

This section covers situations when a final rejection is proper on a first action. Both the times when a final rejection on the first action are proper and improper are discussed.

MPEP Q & A 228: Who is listed on the assignee section of a patent?

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Question:

Who will be listed in the assignee section of a patent?

Answer:

The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or for any patent that is granted.

Any desired change to the designated applicant must be made in accordance with 37 CFR 1.46 no later than issue fee payment.

Chapter Details:

The answer to this question can be found in chapter 300 of the MPEP. This chapter covers Ownership and Assignment.

The answer is from the 9th Edition, Revision 10.2019. 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 308 of the MPEP.  The following is a brief summary of section 308.

308    Issue to Applicant

Where a patent is granted on an application filed by a person other than the inventor, the Office must grant the patent to the real party of interest. Applicants, other than the inventor, are required to notify the Office of any change in the real party of interest in reply to a notice of allowance.

MPEP Q & A 227: What are the requirements for request for a corrected publication?

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Question:

If the Office made a material mistake in a patent application publication that is apparent from the Office records and applicant wishes to correct the material mistake, applicant may file a request for corrected publication. What are the requirements for request for a corrected publication?

Answer:

If the Office made a material mistake in a patent application publication that is apparent from the Office records and applicant wishes to correct the material mistake, applicant may file a request for corrected publication. The request for a corrected publication must:

  • be filed within two months from the date of the patent application publication; and
  • identify the Office’s material mistake in the publication.

The two-month time period is not extendable.

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 1130 of the MPEP.  The following is a brief summary of section 1130.

1130 Republication and Correction of Patent Application Publications

This section covers the republication and correction of patent application publications. If an applicant wishes to correct errors in a patent application publication, or republish the application with an amended specification (including amended claims) and/or replacement drawings, applicant may file a request for republication. Further details are covered on what the request for republication must include.

In addition, this section covers material and non-material mistakes made by the Office and the process for correcting them.

MPEP Q & A 226: When is a rejection on the ground of lack of utility appropriate?

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Question:

When is a rejection on the ground of lack of utility appropriate?

Answer:

A rejection on the ground of lack of utility is appropriate when:

  • it is not apparent why the invention is “useful” because applicant has failed to identify any specific and substantial utility and there is no well-established utility, or
  • an assertion of specific and substantial utility for the invention is not credible.

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 706.03(a) of the MPEP.  The following is a brief summary of section 706.03(a).

706.03(a) Rejections Under 35 U.S.C. 101

This section covers rejections under 35 U.S.C. 101. Patents are not granted for all new and useful inventions and discoveries. The subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits a patent to be granted only for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

Topics such as double patenting, subject matter eligibility, utility, and the improper naming of an inventor are discussed.

MPEP Q & A 225: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification.

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Question:

What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification?

Answer:

Reasons, why the prior art element should not be considered an equivalent to the invention disclosed in the specification, may include:

  • teachings in the specification that the particular prior art is not equivalent
  • teachings in the prior art reference itself that may tend to show nonequivalence
  • 37 CFR 1.132 affidavit evidence of facts tending to show nonequivalence.

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 2184 of the MPEP.  The following is a brief summary of section 2184.

2184 Determining Whether an Applicant Has Met the Burden of Proving Nonequivalence After a Prima Facie Case Is Made

If the applicant disagrees with the inference of equivalence drawn from a prior art reference, the applicant may provide reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification. Further details on determining whether an applicant has met the burden of proving nonequivalence after a prima facie case is made are discussed.

MPEP Q & A 224: What are the “Appropriate circumstances” to vacate the order granting reexamination?

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Question:

What are the “Appropriate circumstances” to vacate the order granting reexamination?

Answer:

“Appropriate circumstances” exist to vacate the order granting reexamination where, for example:

  • (A) the reexamination order is facially not based on prior art patents or printed publications;
  • (B) reexamination is prohibited under 37 CFR 1.907;
  • (C) all claims of the patent were held to be invalid by a final decision of a federal court after all appeals;
  • (D) reexamination was ordered for the wrong patent; or
  • (E) reexamination was ordered based on a duplicate copy of the request.

Chapter Details:

The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers Optional Inter Partes Reexaminations.

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 2646 of the MPEP.  The following is a brief summary of section 2646.

2646 Decision Ordering Reexamination

This section covers the decision ordering reexamination. The decision will identify all claims and issues, identify the patents and/or printed publications relied upon, and provide a brief statement of the rationale supporting each SNQ/RLP.

A substantive determination by the Director of the Office to institute reexamination pursuant to a finding that the prior art patents or printed publications raise a substantial new question of patentability is not subject to review by petition or otherwise. This section covers further details on petitions to vacate the order granting the reexamination.

MPEP Q & A 223: What Size Non-Patent Documents Require Document Size Fees?

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Question:

Document size fees are only applicable to non-patent documents having greater than what number of pages?

Answer:

The document size fees are only applicable to non-patent documents having greater than 20 pages. Non-patent documents having 20 pages or less are not subject to the document size fees.

Chapter Details:

The answer to this question can be found in chapter 2800 of the MPEP. This chapter covers Supplemental Examination.

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 2810.01 of the MPEP.  The following is a brief summary of section 2810.01.

2810.01 Document Size Fees

The document size fees are only applicable to non-patent documents having greater than 20 pages. Non-patent documents having 20 pages or less are not subject to the document size fees.