Archive for category: MPEP Q and A Podcast

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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.

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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.

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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.

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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.

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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.