MPEP Q & A 165: When Patent Owner Fails to File Timely Response to Any Office Action Prior to an Action Closing Prosecution (ACP)

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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    • Any claims under rejection or objection are withdrawn from consideration and will be canceled upon publication of the certificate; and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.

MPEP Q & A 164: Computer-Implemented Methods and the Tax Strategy Provision

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Question:

Would a computer-implemented method that is deemed novel and non-obvious be effected by the tax strategy provision even if used for a tax purpose?

Answer:

A computer-implemented method that is deemed novel and non-obvious would not be affected by this provision even if used for a tax purpose. For example, a novel and non-obvious computer-implemented method for manipulating data would not be affected by this provision even if the method organized data for a future tax filing.

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 2124.01  of the MPEP.  The following is a brief summary of section 2124.01.

2124.01 Tax Strategies Deemed Within the Prior Art

This section covers tax strategies deemed within the prior art. The America Invents Act (AIA) provides that for purposes of evaluating an invention for novelty and nonobviousness under 35 U.S.C. 102 and 103, any strategy for reducing, avoiding, or deferring tax liability (hereinafter “tax strategy”), whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art. As a result, applicants will no longer be able to rely on the novelty or non-obviousness of a tax strategy embodied in their claims to distinguish them from the prior art.

This section also includes examples that are directed to computer-implemented methods. Essentially, a computer-implemented method that is deemed novel and non-obvious would not be affected by this provision even if used for a tax purpose.

MPEP Q & A 163: What are the Most Common Basis for Filing a Reissue Application?

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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.

MPEP Q & A 162: When is a 35 U.S.C. 102 Rejection with Multiple References Proper?

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Question:

When is a 35 U.S.C. 102 rejection with multiple references proper?

Answer:

A 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:

  • Prove the primary reference contains an “enabled disclosure;”
  • Explain the meaning of a term used in the primary reference; or
  • Show that a characteristic not disclosed in the reference is inherent.

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 2131.01  of the MPEP.  The following is a brief summary of section 2131.01.

2131.01 Multiple Reference 35 U.S.C. 102 Rejections

Normally, only one reference should be used in making a rejection under 35 U.S.C. 102.

However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:

  • Prove the primary reference contains an “enabled disclosure;”
  • Explain the meaning of a term used in the primary reference; or
  • Show that a characteristic not disclosed in the reference is inherent. This section provides details on these instances.

MPEP Q & A 161: Living Subject Matter and Patent Protection

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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).

MPEP Q & A 160: Rules for Appellant to Request to Reopen Prosecution

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Question:

Can an Appellant request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection?

Answer:

No, an appellant cannot request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection.

Chapter Details:

The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers appeals.

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 1207.03(b)  of the MPEP.  The following is a brief summary of section 1207.03(b).

1207.03(b) Petition to Designate a New Ground of Rejection and to Reopen Prosecution

This section covers the petition to designate a new ground of rejection and to reopen prosecution. 37 CFR 41.40 sets forth the exclusive procedure for an appellant to request review of the primary examiner’s failure to designate a rejection as a new ground of rejection via a petition to the Director under 37 CFR 1.181.

This procedure should be used if an appellant feels an answer includes a new ground of rejection that has not been designated as such and wishes to reopen prosecution so that new amendments or evidence may be submitted in response to the rejection.

MPEP Q & A 159: What are the Two Criteria for Subject Matter Eligibility?

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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.

MPEP Q & A 158: Can Maintenance Fees be Paid in Cash?

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Question:

Can maintenance fees be paid in cash?

Answer:

Maintenance fees may not be paid in cash.

A maintenance fee may be paid:

  • with Treasury notes
  • with national bank notes
  • with post office money orders
  • with certified checks
  • over the internet by electronic funds transfer (EFT), credit card, or deposit account payment methods

Chapter Details:

The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers maintenance fees.

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 2522 of the MPEP.  The following is a brief summary of section 2522.

2522 Methods of Payment

This section outlines the ways a maintenance fee may be paid. In addition, it covers instances when the payment will not be accepted (like, for instance, when the payment is less than the required amount).

MPEP Q & A 157: Ways a Patent May be Corrected or Amended

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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.

MPEP Q & A 156: What is the Definition of Fundamental Economic Practices?

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Question:

What is the definition of fundamental economic practices?

Answer:

The courts have used the phrases “fundamental economic practices” or “fundamental economic concepts” to describe concepts relating to the economy and commerce, such as agreements between people in the form of contracts, legal obligations, and business relations.

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.