MPEP Q & A 215: When Did Amendments to the Rules of Practice for Trials Before PTAB Take Effect?

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Question:

When did the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’ take effect?

Answer:

This rule is effective May 2, 2016, and applies to all AIA petitions filed on or after the effective date and to any ongoing AIA preliminary proceeding or trial before the Office.

Chapter Details:

This question comes from the following supplement “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”. 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: “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”.

Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board

This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), the transitional program for covered business method patents (‘‘CBM’’), and derivation proceedings that implemented provisions of the Leahy Smith America Invents Act (‘‘AIA’’) providing for trials before the Office.

MPEP Q & A 214: What are Sufficient Grounds for Post-Grant Review?

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Question:

According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’, what are sufficient grounds for a post-grant review?

Answer:

37 CFR 42.208 (C) states that Post-grant review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would, if unrebutted, demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute a post-grant review. A petitioner may seek leave to file a reply to the preliminary response in accordance with §§ 42.23 and 42.24(c). Any such request must make a showing of good cause.

Chapter Details:

This question comes from the following supplement “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”. 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: “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”.

Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board

This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), the transitional program for covered business method patents (‘‘CBM’’), and derivation proceedings that implemented provisions of the Leahy Smith America Invents Act (‘‘AIA’’) providing for trials before the Office.

MPEP Q & A 213: Can Attorney Arguments Take the Place of Evidence?

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Question:

Can attorney arguments take the place of evidence?

Answer:

No, the arguments of counsel cannot take the place of evidence in the record.

Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.

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 come from section 716.01(c)  of the MPEP.  The following is a brief summary of section 716.01(c).

716.01(c)   Probative Value of Objective Evidence

This section discusses the probative value of objective evidence. To be of probative value, any objective evidence should be supported by actual proof. Attorney arguments cannot take the place of evidence. This section also discusses opinion evidence.

MPEP Q & A 212: What is the Number of Days Before an Oral Argument for Exchange of Exhibits?

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Question:

According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’, what is the number of days before an oral argument for the exchange of exhibits?

Answer:

The number of days before an oral argument for the exchange of exhibits is at least 7 days.

Chapter Details:

This question comes from the following supplement “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”. 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: “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”.

Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board

This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), the transitional program for covered business method patents (‘‘CBM’’), and derivation proceedings that implemented provisions of the Leahy Smith America Invents Act (‘‘AIA’’) providing for trials before the Office.

MPEP Q & A 211: When May an Abandoned Application be Used as Prior Art?

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Question:

When may an abandoned application be used as prior art?

Answer:

An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent [application] is reference[d] in the disclosure of another patent, in a publication, or by voluntary disclosure under former Defensive Publication rule

An abandoned patent application becomes available as prior art only as of the date the public gains access to it.

  • However, the subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent or U.S. patent application publication may be relied on in a 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) rejection based on that patent or patent application publication if the disclosure of the abandoned application is actually included or incorporated by reference in the patent.

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 come from section 2127  of the MPEP.  The following is a brief summary of section 2127.

2127    Domestic and Foreign Patent Applications as Prior Art

This section discusses domestic and foreign patent applications as prior art. It covers abandoned applications, including provisional applications. Essentially, abandoned applications disclosed to the public can be used as prior art.

In addition, it covers applications which have issued as patents and foreign applications open for public inspection. Lastly, it covers pending U.S. applications.

MPEP Q & A 210: What is the Executive Summary of the Supplement ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board?

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Question:

What is the executive summary of the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’?

Answer:

This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for IPR, PGR, CBM, and derivation proceedings that implemented provisions of the AIA providing for trials before the Office. These include:

  • Allowing new testimonial evidence to be submitted with a patent owner’s preliminary response
  • Adding a Rule 11-type certification for papers filed in a proceeding
  • Allowing a claim construction approach that emulates the approach used by a district court following Phillips v. AWH Corp. (hereinafter ‘‘a Phillips-type or district court-type construction approach’’) for claims of patents that will expire before entry of a final written decision
  • Replacing the current page limit with a word count limit for major briefing

Chapter Details:

This question comes from the following supplement “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”. 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: “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”.

Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board

This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), the transitional program for covered business method patents (‘‘CBM’’), and derivation proceedings that implemented provisions of the Leahy Smith America Invents Act (‘‘AIA’’) providing for trials before the Office.

MPEP Q & A 209: Submission of an Oath or Declaration From a Prior Application

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Question:

Does a copy of an oath or declaration from a prior application need to be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012 even if the oath or declaration identifies the application number of the prior application?

Answer:

Yes, a copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012, even if the oath or declaration identifies the application number of the prior application.

However, if such a copy of the oath or declaration is filed after the filing date of the continuation or divisional application and an application number has been assigned to the continuation or divisional application, the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file. Furthermore, applicant should also label the copy of the oath or declaration with the application number of the continuation or divisional application in the event that the cover letter is separated from the copy of the oath or declaration.

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 201.06(c) of the MPEP.  The following is a brief summary of section 201.06(c).

201.06(c) 37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure

This section lays out details of 37 C.F.R. 1.53(b) including application types filed under the statute and the requirements for completeness. There are differences in the requirements for applications filed under 37 C.F.R. 1.53(b) before and after 9/16/12. These differences are discussed as well as details of the oath or declaration along with the specification and drawings.

In addition, this section covers incorporating by reference the prior application, inventorship, substitute statements, changing the attorney correspondence address, small entity or microentity status, copies of affidavits, extensions of time, abandonment of the prior nonprovisional application and examination.

MPEP Q & A 208: Filing a Petition to Make an Application Special Without a Fee

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Question:

Is it possible to file a petition to make an application special without a fee?

Answer:

A petition to make an application special may be filed without a fee if the basis for the petition is:

(1) The applicant’s age or health; or

(2) That the invention will materially:

  • (i) Enhance the quality of the environment;
  • (ii) Contribute to the development or conservation of energy resources; or
  • (iii) Contribute to countering terrorism.

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 708.01 of the MPEP.  The following is a brief summary of section 708.01.

708.01 List of Special Cases

This section references 37 C.F.R. 1.102 which discusses the advancement of examination. It includes a list of special cases which are advanced out of turn for examination.

MPEP Q & A 207: When Can a Practitioner Enter a Business Transaction with a Client

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Question:

When can a practitioner enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client?

Answer:

A practitioner shall not enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client unless:

  • The transaction and terms on which the practitioner acquires the interest are fair and reasonable to the client and are fully disclosed and transmitted in writing in a manner that can be reasonably understood by the client;
  • The client is advised in writing of the desirability of seeking and is given a reasonable opportunity to seek the advice of independent legal counsel in the transaction; and
  • The client gives informed consent, in a writing signed by the client, to the essential terms of the transaction and the practitioner’s role in the transaction, including whether the practitioner is representing the client in the transaction.

Chapter Details:

The answer to this question can be found in a USPTO supplement. This chapter covers correction of patents.

The answer is from the 9th Edition, Revision 08.2017 USPTO supplement. Depending on future changes to the MPEP and the tested supplements, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question comes from the following supplement: Changes to Representation of Others Before the USPTO Final Rules

Changes to Representation of Others Before the USPTO Final Rules

The United States Patent and Trademark Office (Office or USPTO) is adopting the new USPTO Rules of Professional Conduct (USPTO Rules), which are based on the American Bar Association’s (ABA) Model Rules of Professional Conduct (ABA Model Rules).

The Office has also revised the existing procedural rules governing disciplinary investigations and proceedings.

MPEP Q & A 206: Requirements for an Applicant to Rescind Nonpublication Requests

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Question:

What are the requirements for an applicant to rescind a nonpublication request?

Answer:

The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublication request must:

  1. Identify the application to which it is directed;
  2. State in a conspicuous manner that the request that the application is not to be published under 35 U.S.C. 122(b) is rescinded; and
  3. Be signed in compliance with § 1.33(b).

Chapter Details:

The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions.

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 1123 of the MPEP.  The following is a brief summary of section 1123.

1123 Rescission of a Nonpublication Request

An applicant may rescind a previously-filed nonpublication request at any time. This section outlines how an applicant may rescind nonpublication requests. For instance, applicants are strongly encouraged to provide a notice of foreign filing whenever rescinding a nonpublication request in anticipation of filing a counterpart application in an eighteen-month publication country.