MPEP Q & A 183: When Changes to the Claim Construction Standard Apply

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Question:

When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” apply?

Answer:

As shown in the supplement …

The changes to the claim construction standard will apply to proceedings where a petition is filed on or after the effective date of the final rule (November 13, 2018).

  • The Office will apply the federal court claim construction standard, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), which is articulated in Phillips, to construe patent claims and proposed substitute claims in AIA proceedings in which trial has not yet been instituted before the effective date of the final rule.
  • The Office will continue to apply the BRI standard for construing unexpired patent claims and proposed substitute claims in AIA proceedings where a petition was filed before the effective date of the final rule.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings 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:

The following is a summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).

  • In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

MPEP Q & A 182: Characteristics of Ex Parte Reexamination

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Question:

List one of the basic characteristics of ex parte reexamination.

Answer:

The basic characteristics of ex parte reexamination are as follows:

  • Anyone can request reexamination at any time during the period of enforceability of the patent;
  • In ex parte reexaminations, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103. Patents may also be applied in a double patenting rejection;
  • A substantial new question of patentability must be present for reexamination to be ordered;
  • If ordered, the actual reexamination proceeding is ex parte in nature;
  • Decision on a request for reexamination submitted under 35 U.S.C. 302 must be made no later than 3 months from its filing, and the remainder of the proceeding must proceed with “special dispatch” within the Office;
  • If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of a reexamination certificate;
  • The scope of a claim cannot be enlarged by amendment;
  • All reexamination and patent files are open to the public;
  • The reexamination file is scanned into IFW to provide an electronic format copy of the file.

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 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 2209 of the MPEP.  The following is a brief summary of section 2209.

2209  Ex Parte Reexamination

The reexamination statute and rules permit any person to file a request for an ex parte reexamination containing certain elements and the fee required. The Office initially determines if “a substantial new question of patentability” is presented. If such a new question has been presented, reexamination will be ordered.

This section covers how reexamination proceedings differ from regular examination procedures and the basic characteristics of ex parte reexamination. For instance, anyone can request reexamination at any time during the period of enforceability of the patent and the prior art considered during reexamination is limited to prior art patents or printed publications.

MPEP Q & A 181: Summary of Claim Construction Standard

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Question:

What is the executive summary of the final rule when dealing with the claim construction standard that took effect on November 13, 2018?

Answer:

This final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-Smith America Invents Act (‘‘AIA’’) providing for trials before the Office, by replacing the BRI (broadest reasonable interpretation) standard for interpreting unexpired patent claims and substitute claims proposed in a motion to amend with the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).

The rule adopts the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp. and its progeny.

Under the final rule, the PTAB will apply in an AIA proceeding the same standard applied in federal courts to construe patent claims.

This final rule also amends the rules to add a new provision which states that any prior claim construction determination in a civil action or proceeding before the ITC regarding a term of the claim in an IPR, PGR, or CBM proceeding will be considered if that determination is timely filed in the record of the IPR, PRG or CBM proceeding.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings 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: “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. The supplement specifically covers details including the following…

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).

  • In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

MPEP Q & A 180: AIA 35 U.S.C. 102(b)

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Question:

What does AIA 35 U.S.C. 102(b) discuss?

Answer:

AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a).

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 2152 of the MPEP.  The following is a brief summary of section 2152.

2152  Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)

This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

This section provides explicit details on AIA 35 U.S.C. 102(a) and (b). It includes a definition of each along with similarities and differences to pre-AIA 35 U.S.C. 102(a), (b), and (e).

MPEP Q & A 179: What is the 3-Step Test for Recapture?

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Question:

What is the 3-step test for recapture?

Answer:

The three-step test for recapture is:

  • First, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
  • Next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
  • Finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.

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 1412.02 of the MPEP.  The following is a brief summary of section 1412.02.

1412.02 Recapture of Canceled Subject Matter

A reissue will not be granted to “recapture” claimed subject matter which was surrendered in an application to obtain the original patent. This section covers the three-step test for recapture:

(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;

(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.

Claims to separate inventions/embodiments/species that were not claimed in the original application prosecution (i.e., “overlooked aspects”) are not a part of a recapture analysis. 

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.