MPEP Q & A 178: What is the Difference Between Derivation and Priority of Invention?

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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.

MPEP Q & A 177: Revealing Information Relating to the Representation of a Client When the Client has Not Given Informed Consent

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Question:

Can a patent practitioner ever reveal information relating to the representation of a client when the client has not given informed consent?

Answer:

Yes, a practitioner may reveal information relating to the representation of a client to the extent the practitioner reasonably believes necessary:

  • (1) To prevent reasonably certain death or substantial bodily harm;
  • (2) To prevent the client from engaging in inequitable conduct before the Office or from committing a crime or fraud that is reasonably certain to result in substantial injury to the financial interests or property of another and in furtherance of which the client has used or is using the practitioner’s services
  • (3) To prevent, mitigate or rectify substantial injury to the financial interests or property of another that is reasonably certain to result or has resulted from the client’s commission of a crime, fraud, or inequitable conduct before the Office in furtherance of which the client has used the practitioner’s services;
  • (4) To secure legal advice about the practitioner’s compliance with the USPTO Rules of Professional Conduct;
  • (5) To establish a claim or defense on behalf of the practitioner in a controversy between the practitioner and the client, to establish a defense to a criminal charge or civil claim against the practitioner based upon conduct in which the client was involved, or to respond to allegations in any proceeding concerning the practitioner’s representation of the client; or
  • (6) To comply with other law or a court order.

Chapter Details:

This question comes from 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 comes from the following supplement: Changes to Representation of Others Before the USPTO Final Rules. It specifically comes from 11.106 which covers Confidentiality of Information.

MPEP Q & A 176: What Does a Petition Under 37 C.F.R. 1.78 Require?

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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.

MPEP Q & A 175: Concepts Related to Tracking or Organizing Information

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Question:

List a concept related to tracking or organizing information.

Answer:

Examples of concepts related to tracking or organizing information include;

  • i. classifying and storing digital images in an organized manner
  • ii. collecting information, analyzing it, and displaying certain results of the collection and analysis
  • iii. encoding and decoding image data – RecogniCorp, LLC v. Nintendo Co;
  • iv. organizing information through mathematical correlations
  • v. receiving, screening, and distributing email

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 174: Submission Types that May Not be Filed Via EFS Web.

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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.

MPEP Q & A 173: What is a Complete Nonprovisional Application Comprised of?

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Question:

What is a complete nonprovisional application comprised of?

Answer:

A complete nonprovisional application comprises the following:

  • a specification, including claims,
  • drawings,
  • an oath or declaration,
  • the prescribed filing fee, search fee, examination fee and application size fee

Chapter Details:

The answer to this question can be found in chapter 600 of the MPEP. This chapter covers parts, form, and content of application.

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 601 of the MPEP.  The following is a brief summary of section 601.

601 Content of Provisional and Nonprovisional Applications 

This section covers the guidelines for drafting a nonprovisional patent application including the contents for a complete nonprovisional application and the arrangement and contents of the specification. A nonprovisional application must include a specification, including claims, drawings (if necessary), an oath or declaration, and the prescribed fees.

This section also covers the guidelines for drafting a provisional application. A provisional application does not need claims and no oath or declaration is required.

MPEP Q & A 172: Fees that Must be Paid Upon Filing a Request for Prioritized Examination

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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.

MPEP Q & A 171: Instances Where Publication or Issue Date is Later Than the Current Date

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Question:

When the publication or issue date is later than the current date (i.e., the date of the request), who will that information be given to?

Answer:

When the publication or issue date is later than the current date (i.e., the date of the request), such information may be given only to the applicant, an inventor, the assignee of record, or the attorney or agent of record.

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 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 101 of the MPEP.  The following is a brief summary of section 101.

101 General

Patent applications must be kept confidential. Approved patents, however, are freely open to the public (unless they are under a secrecy order).

There are 3 major types of patent status. These include pending applications, abandoned applications, and issued patents. 37 C.F.R. 1.14 discusses the rules regarding the confidentiality of an application’s status.

In addition, 37 C.F.R. 1.14 covers the confidentiality of patent applications in regards to instances when application status may be revealed to private parties within the public. 35 U.S.C. 122 states the specific times when patent related documents will be published by the PTO.

MPEP Q & A 170: Must a Claim be Identified to a Correct Category of Subject Matter?

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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.

MPEP Q & A 169: Non-Limiting Claims Not Directed to Any of the Statutory Categories.

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Question:

Provide an example of a non-limiting claim that is not directed to any of the statutory categories.

Answer:

Examples of a non-limiting claim that is not directed to any of the statutory categories include;

  • Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations;
  • Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave; and
  • Subject matter that the statute expressly prohibits from being patented, such as humans per se, which are excluded under The Leahy-Smith America Invents Act (AIA).

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.