MPEP Q & A 108: Computer Functions Recognized to be Well‐Understood, Routine, and Conventional Functions When They are Claimed in a Merely Generic Manner

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Question:

List two computer functions recognized to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner.

Answer:

The courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner:

  • Performing repetitive calculations,
  • Receiving, processing, and storing data,
  • Electronically scanning or extracting data from a physical document,
  • Electronic recordkeeping,
  • Automating mental tasks, and
  • Receiving or transmitting data over a network, e.g., using the Internet to gather data.

Chapter Details:

The answer to this question can be found in the following supplement: July 2015 Update: Subject Matter Eligibility. 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: July 2015 Update: Subject Matter Eligibility.

MPEP Q & A 107: Times When Explicit Petitions for Foreign Filing Licenses May Be Considered by Applicants

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Question:

Name two times when an applicant may want to consider an explicit petition for foreign filing licenses.

Answer:

Explicit petitions for foreign filing licenses may be considered by applicants when:

  • the filing receipt license is not granted;
  • the filing receipt has not yet been issued;
  • there is no corresponding U.S. application;
  • subject matter additional to that already licensed is sought to be licensed; or
  • expedited handling is requested.

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 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 140 of the MPEP.  The following is a brief summary of section 140.

140 Foreign Filing Licenses

This section covers both expedited foreign filing licenses and retroactive licenses. Essentially, if an inventor files a patent application in the U.S., he or she may not file the same application in a foreign country prior to the passing of six months without first obtaining a foreign filing license. If the inventor files in a foreign country before the 6 month waiting period has passed without getting a license first, he or she must immediately file for a retroactive license.

 

MPEP Q & A 106: Indicia That a Continuing Reissue Application is Being Filed

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Question:

Name two indicia that a continuing reissue application is being filed.

Answer:

Indicia that a continuing reissue application is being filed are:

  • A reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration.
  • A specification and/or claims in proper double column reissue format.
  • Amendments in proper format.
  • A statement of assignee ownership and consent by assignee.
  • A correct transmittal letter identifying the application as a reissue filing.
  • An identification of the application as being “a reissue continuation of application number [the parent reissue application]” or “a continuation and reissue of application number [the parent reissue application]” or equivalent language, rather than being “a continuation of reissue application number [the parent reissue application].”

Chapter Details:

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

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 1451 of the MPEP.  The following is a brief summary of section 1451.

1451    Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending

Continuations and divisionals of reissue applications, to the extent possible, are treated in the same manner as continuations and divisionals of non-reissue applications. This section covers divisional reissue applications and continuation reissue applications.

MPEP Q & A 105: Petition Fee Requirements For Participation in the PPH

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Question:

For participation in the Global/IP5 PPH pilot program at the USPTO, does the applicant need to submit a petition fee under 37 C.F.R. 1.17(h).

Answer:

No, for participation in the Global/IP5 PPH pilot program at the USPTO, the applicant must submit:

  • A request for participation in the Global/IP5 PPH pilot program and a request that the U.S. application be advanced out of turn for examination by order of the Director to expedite the business of the Office under 37 CFR 1.102(a). A petition fee under 37 CFR 1.17(h) is NOT required.

Chapter Details:

The answer to this question can be found in the PTO supplement known as, Implementation of the Global and IP5 Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices. This supplement covers the patent prosecution highway or PPH. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.

Section Summary:

This question and answer comes from the PTO supplement known as, Implementation of the Global and IP5 Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices. The answer is specifically from Section  III. Requirements for Requesting Participation in the Global PPH or IP5 PPH (“Global/IP5 PPH”) Pilot Program in the USPTO :

Subsection B. Required Documents

This subsection covers the required documents for requesting participation in the PPH program.

MPEP Q & A 104: What Submission of Article 19 Amendments Should Comprise

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Question:

Name one item the submission of Article 19 amendments should comprise.

Answer:

The submission of Article 19 amendments should comprise:

  • (i) a complete set of claims in replacement of the claims originally filed
  • (ii) a letter which must indicate the differences between the claims as filed and those as amended plus the basis for the amendments
  • (iii) an optional statement under Article 19

Chapter Details:

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

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 1853 of the MPEP.  The following is a brief summary of section 1853.

1853 Amendment Under PCT Article 19

The applicant is entitled, under Article 19, to one opportunity to amend the claims of the international application in the international phase. Further opportunities to amend the claims, and also the description and the drawings, are available during the international phase under Article 34 if, and only if, the applicant files a Demand for international preliminary examination.

Any amendment to the claims under Article 19 must be filed with the International Bureau – not with the receiving Office nor with the International Searching Authority. The amendments must be in the language in which the international application is published.

Further details for amendments under PCT Article 19 are discussed in this section.

MPEP Q & A 103: What Grounds for Seeking Inter Partes Review are Limited to Compared with Post-Grant Review

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Question:

What are the grounds for seeking inter partes review limited to compared with post-grant review?

Answer:

The grounds for seeking inter partes review are limited to issues raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

  • In contrast, the grounds for seeking post-grant review include any ground that could be raised under 35 U.S.C. 282(b)(2) or (3).
  • Such 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 PTO supplement known as, “Inter Partes, Post Grant, and Covered Business Method Review Final Rules”. This supplement covers New Trial Proceedings. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.

Section Summary:

This question and answer comes from 35 U.S.C. 311 of the supplement.  The following is a brief summary of section 35 U.S.C. 311:

35 U.S.C. 311: Inter partes review

The AIA provides that a person who is not the owner of a patent may file a petition with the Office to institute an inter partes review of the patent.

MPEP Q & A 102: Earlier Concluded Examination or Review of Patent

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Question:

What is an earlier concluded examination or review of the patent?

Answer:

An earlier concluded examination or review of the patent is:

  • (A) the original examination of the application which matured into the patent;
  • (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent;
  • (C) the examination of the patent in an earlier concluded reexamination or supplemental examination;
  • (D) the review of the patent in an earlier concluded trial by the Patent Trial and Appeal Board, such as a post-grant review, inter partes review, or covered business method review of the patent; or
  • (E) any other contested Office proceeding which has been concluded and which involved the patent.

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 be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2242 of the MPEP.  The following is a brief summary of section 2242.

2242    Criteria for Deciding Request

This section lays out the criteria for deciding the request. It covers the meaning of the substantial new question of patentability and how the presence or absence of it determines whether or not reexamination will be ordered. In addition, in order to further clarify the meaning of “a substantial new question of patentability” certain situations are outlined in this section which, if present, should be considered when making a decision as to whether or not “a substantial new question of patentability” is present. Lastly, this section covers the policy where a federal court decision has been issued on the patent.

MPEP Q & A 101: Petition for a Derivation Proceeding

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Question:

What must a petition for a derivation proceeding provide?

Answer:

In a petition for a derivation proceeding, the petitioner must:

  • (i) identify which application or patent is disputed; and
  • (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.

Chapter Details:

The answer to this question can be found in the PTO supplement known as, “Derivation Proceeding Final Rules”. This supplement covers derivation proceedings. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.

Section Summary:

This question and answer comes from the PTO Supplement titled Derivation Proceeding Final Rules. 

The following is a brief summary of this supplement:

The United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement the provisions of the Leahy-Smith America Invents Act (AIA) that create a new derivation proceeding to be conducted before the Patent Trial and Appeal Board (Board).

The changes in this final rule take effect on March 16, 2013.

MPEP Q & A 100: Activities Used as an Indication of Commercial Exploitation

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Question:

List two activities that can be used as an indication of commercial exploitation?

Answer:

The following activities should be used by the examiner as indicia of this subjective commercial intent:

  • Preparation of various contemporaneous “commercial” documents, e.g., orders, invoices, receipts, delivery schedules, etc.;
  • Preparation of price lists and distribution of price quotations;
  • Display of samples to prospective customers;
  • Demonstration of models or prototypes, especially at trade conventions, and even though no orders are actually obtained;
  • Use of an invention where an admission fee is charged; and
  • Advertising in publicity releases, brochures, and various periodicals.

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 be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2133.03(e)(1) of the MPEP.  The following is a brief summary of section 2133.03(e)(1).

2133.03(e)(1)    Commercial Exploitation

This section expands on the topic of commercial exploitation. One policy of the on sale and public use bars is the prevention of inventors from exploiting their inventions commercially more than 1 year prior to the filing of a patent application. The commercial activity must legitimately advance the development of the invention towards completion.

This section also covers the significant factors indicative of commercial exploitation. This includes (but is not limited to) the preparation of price lists and displaying samples to prospective customers.

MPEP Q & A 99: Types of Information Considered Status Information

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Question:

List two types of information that are considered status information.

Answer:

Status information of an application means only the following information:

  • whether the application is pending, abandoned, or patented;
  • whether the application has been published;
  • the application number or the serial number plus any one of the filing date of the national application, the international filing date or the date of entry into the national stage; and
  • whether another application claims the benefit of the application

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 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 102 of the MPEP.  The following is a brief summary of section 102.

102 Information as to Status of an Application

This section discusses exactly what status information is limited to. A requester seeking status information regarding an application should check the information on PAIR and FIU. In addition, this section outlines who is entitled to status information on non published, pending or abandoned applications.