Archive for category: MPEP Q and A Podcast

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Question:

List one consequence for when the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP).

Answer:

If the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP), it will result in the following consequences:

• Where there were no claims found patentable in the Office action, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) terminating prosecution and indicating the status of the claims as canceled.
• Where at least one claim is found patentable, all future prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which do not expand the scope of the claim(s) found patentable at that time.
• The patent owner will not be permitted to add claims broader in the scope than the patentable claims which remain in the proceeding at the time of the patent owner’s failure to timely respond.
• The examiner will proceed to issue an ACP indicating that:
  • Any claims under rejection or objection are withdrawn from consideration and will be canceled upon publication of the certificate; and
  • Prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which do not expand the scope of the claim(s) found patentable at that time.

Chapter Details:

The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers optional inter partes reexamination.

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 2666.10 of the MPEP.  The following is a brief summary of section 2666.10.

2666.10 Patent Owner Does Not Respond to Office Action  

This section covers instances when the patent owner does not respond to an Office action. The consequences are outlined for when a patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP) and where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed.

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Question:

What are the most common basis for filing a reissue application?

Answer:

The most common bases for filing a reissue application are:

• the claims are too narrow or too broad;
• the disclosure contains inaccuracies;
• applicant failed to or incorrectly claimed foreign priority; and
• applicant failed to make reference to or incorrectly made reference to prior copending applications.

Chapter Details:

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

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 1402 of the MPEP.  The following is a brief summary of section 1402.

1402 Grounds for Filing

This section covers the grounds for filing a reissue application. Essentially, they are filed to correct an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. The following types of errors are briefly mentioned and explained in this section; errors based on the scope of claims, inventorship errors, errors related to priority of a foreign application, errors in the benefit claim to a domestic application, and errors in drawings.

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Question:

Is it true that living subject matter with markedly different characteristics from any found in nature, such as the claimed bacterium produced by genetic engineering, are excluded from patent protection by 35 U.S.C. 101?

Answer:

No, it is not true. For example, the Federal Circuit has indicated that “discoveries that possess ‘markedly different characteristics from any found in nature,’ … are eligible for patent protection.”

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 2105  of the MPEP.  The following is a brief summary of section 2105.

2105 Patent Eligible Subject Matter — Living Subject Matter

This section covers living subject matter, providing examples of what can be and cannot be patentable. For example, new minerals discovered in the earth are not patentable, but microorganisms produced by genetic engineering can be patented. In addition, it gives specifics on how no patent may issue on a claim directed to or encompassing a human organism, which was added in the America Invents Act (AIA).

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Question:

What are the two criteria for subject matter eligibility?

Answer:

First, the claimed invention must be in one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter.

Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called “judicially recognized exceptions” or simply “exceptions”) are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature).

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 of the MPEP.  The following is a brief summary of section 2106.

2106 Patent Subject Matter Eligibility

This section discusses the two criteria for subject matter eligibility which are; that the claimed invention must be in one of the four statutory categories and that the claimed invention must also qualify as patent-eligible subject matter. It also covers details of the broadest reasonable interpretation (BRI) including that the BRI of the claim must be established prior to examining a claim for eligibility. Lastly, there is a summary of the patent subject matter eligibility analysis and a flowchart outlining the steps.

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Question:

Name two ways a patent may be corrected or amended.

Answer:

A patent may be corrected or amended in eight ways, namely by:

1. reissue,
2. the issuance of a certificate of correction which becomes a part of the patent,
3. disclaimer,
4. reexamination,
5. supplemental examination,
6. inter partes review,
7. post grant review, and
8. covered business method review

Chapter Details:

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

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 1401 of the MPEP.  The following is a brief summary of section 1401.

1401 Reissue

The provisions of 35 U.S.C. 251 which discusses the reissue of defective patents, permit the reissue of a patent in order to correct an error in the patent made without any deceptive intention and provide the criteria for the reissue patent.