Archive for category: MPEP Q and A Podcast

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Question:

What is the difference between derivation and priority of invention?

Answer:

Derivation and priority of invention both focus on inventorship.  Derivation addresses originality, i.e., who invented the subject matter, whereas priority focuses on which party invented the subject matter first.

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 2137 of the MPEP.  The following is a brief summary of section 2137.

2137 Pre-AIA 35 U.S.C. 102(f)

This section discusses pre-AIA 35 U.S.C. 102(f) which states that a person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented. A rejection under 35 U.S.C. 102(f) is proper where it can be shown that an applicant derived an invention from another. Derivation requires complete conception by another and communication to the alleged deriver. The party alleging derivation does not have to prove an actual reduction to practice, derivation of public knowledge, or derivation in this country. In addition, there is a discussion that pre-AIA 35 U.S.C. 102(f) may apply where pre-AIA 35 U.S.C. 102(a) and pre-AIA 35 U.S.C. 102(e) are not available statutory grounds for rejection.

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Question:

What does a petition under 37 C.F.R. 1.78 require?

Answer:

A petition under 37 CFR 1.78(b) requires:

• the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet);
• the petition fee; and
• a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period was unintentional.

Chapter Details:

The answer to this question can be found in chapter 200 of the MPEP. This chapter covers types and status of application; benefit and priority claims.

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 211.01(a) of the MPEP.  The following is a brief summary of section 211.01(a).

211.01(a)   Claiming the Benefit of a Provisional Application

This section outlines the details of claiming the benefit of a provisional application. One topic covered is the 12-month deadline for claiming the benefit of a prior-filed provisional application.

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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.

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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.

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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.