MPEP Q & A 22: Required Elements of a Request for Ex Parte Reexamination

mpep-podcast-800

Question:

List one of the required elements of a request for ex parte reexamination.

Answer:

The required elements of a request for ex parte reexamination are as follows:

  • “A statement pointing out each substantial new question of patentability based on prior patents and printed publications.”
  • “An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.
  • “A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non- English language patent or printed publication.”
  • “A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.”
  • “A certification that a copy of the request filed by a person other than the patent owner has been served in its entirely on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.”
  • “A certification by the third party requester that the statutory estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request.”

Chapter Details:

The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers the 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 or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2214 of the MPEP.  The following is a brief summary of section 2214.

2214    Content of Request for Ex  Parte Reexamination

This section outlines the required elements of a request for ex parte reexamination.  One essential item includes a statement pointing out each substantial new question of patentability based on prior patents and printed publications. Additional requirements are discussed in this section.

 

 

MPEP Q & A 21: Request for Reinstatement of All or Part of the Period of Adjustment

mpep-podcast-800

Question:

What must a request for reinstatement of all or part of the period of adjustment reduced for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request include?

Answer:

A request for reinstatement of all or part of the period of adjustment reduced for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request must include:

  • (1) the fee; and
  • (2) a showing to the satisfaction of the Director that, in spite of all due care, the applicant was unable to reply to the rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request.

Chapter Details:

The answer to this question can be found in chapter 2700 of the MPEP. This chapter covers Patent Terms and Extensions.

The answer is from the 9th Edition, Revision 07.2015. 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 2734 of the MPEP.  The following is a brief summary of section 2734.

2734     Application for Patent Term Adjustment; Due Care Showing  

Any request for reconsideration of the patent term adjustment indicated on the patent must be by way of an application for patent term adjustment which must filed within two months of the date the patent was granted and accompanied by the fee and a statement of the facts involved. This section further covers the due care showing when requesting a patent term adjustment.

 

MPEP Q & A 20: Details of Substantial New Question of Patentability

mpep-podcast-800

Question:

What should a substantial new question of patentability not be based upon?

Answer:

A substantial new question cannot be based upon:

  • prior art expressly relied upon by the examiner during the prosecution
  • prior art which was actually discussed

Chapter Details:

The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers the 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 or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2216 of the MPEP.  The following is a brief summary of section 2216.

2216    Substantial New Question of  Patentability

The request must include a statement that points out each new question of patentability based on prior patents and printed publications. If a substantial new question is brought forth, the patent owner will need to file a statement within two months. Further details concerning the meaning of a substantial new question of patentability are covered in this section.

MPEP Q & A 19: Items a Protestor Must Give the PTO

mpep-podcast-800

Question:

What must a protestor give the PTO?

Answer:

A protestor must give the PTO:

  • a listing of the patents, publications or other information relied upon
  • a copy of each item listed
  • a translation of non-English papers
  • a concise explanation of the relevance of the references
  • proof of service to the applicant

Chapter Details:

The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protests.

The answer is from the 9th Edition, Revision 07.2015. 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 1901 of the MPEP.  The following is a brief summary of section 1901.

1901 Protest Under 37 C.F.R. 1.291

A protest is a means for a third party to challenge whether a pending application should issue. This section covers protests under 37 C.F.R. 1.291 including who may submit them, what should be filed with the protest, servicing a protest, and when to submit a protest.

Protests are ex parte matters.  The examiner will not communicate further with the protester once the protest has been received.  This section also briefly discusses protests and compliance issues.

MPEP Q & A 18: Duty to Disclose

mpep-podcast-800

Question:

Who has a duty to disclose?

Answer:

The following individuals have a duty to disclose:

  • each inventor
  • each registered practitioner
  • each assignee
  • every other person who is substantially involved in the preparation or prosecution of the application
    • the duty does not extend to typists, clerks, and similar personnel
    • the duty does not extend to corporations

Chapter Details:

The answer to this question can be found in chapter 2000 of the MPEP. This chapter covers the duty to disclose.

The answer is from the 9th Edition, Revision 07.2015. 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  2002 of the MPEP.  The following is a brief summary of section 2002.

2002  Disclosure – By Whom and How Made

This section covers who has a duty to disclose (which is basically everyone involved in the application) and how to disclose the information.

MPEP Q & A 17: Plants That are Not Patentable

mpep-podcast-800

Question:

Name two types of plants that are not patentable.

Answer:

All plants are patentable except:

  • bacteria
  • those that are tuber propagated
  • plants that are not invented or discovered in a cultivated state and asexually reproduced
  • plants that are not obvious

Chapter Details:

The answer to this question can be found in chapter 1600 of the MPEP. This chapter covers plant patents.

The answer is from the 9th Edition, Revision 07.2015. 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 1601 of the MPEP.  The following is a brief summary of section 1601.

1601     Introduction: The Act, Scope, Type of Plants Covered

This section provides an introduction to plant patents.  Essentially, whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids and newly found seedlings (other than a tuber propagated plant or a plant found in an uncultivated state) may obtain a plant patent. Further details on the types of plants that are patentable are covered.

 

MPEP Q & A 16: Signature Required for Disclaimer in Patent or Reexamination Proceeding

mpep-podcast-800

Question:

Who must a disclaimer be signed by in a patent or a reexamination proceeding?

Answer:

A disclaimer filed in a patent or a reexamination proceeding must be signed by either:

  • the patentee (the assignee, the inventor(s) if the patent is not assigned, or the assignee and the inventors if the patent is assigned-in-part), or
  • an attorney or agent of record.

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 07.2015. 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 1490 of the MPEP.  The following is a brief summary of section 1490.

1490    Disclaimers

This section covers disclaimers.  A disclaimer is a statement filed by an owner (in part or in entirety) of a patent or of a patent to be granted (i.e., an application), in which said owner relinquishes certain legal rights to the patent. There are two types of disclaimers: a statutory disclaimer and a terminal disclaimer. This section provides coverage of both types of disclaimers as well as signing and supporting a disclaimer, processing in a Certificate of correction branch, withdrawing a recorded terminal disclaimer and other matters directed to terminal disclaimers.

MPEP Q & A 15: Procedural Step for International Applications Going Through the International Searching Authority

mpep-podcast-800

Question:

List one procedural step that all international applications go through in the International Searching Authority.

Answer:

The main procedural steps that any international application goes through in the International Searching Authority are:

  • the making of the international search,
  • the preparing of the international search report and
  • for international applications having an international filing date on or after January 1, 2004, the preparing of a written opinion of the International Searching Authority

Chapter Details:

The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers Patent Cooperation Treaty.

The answer is from the 9th Edition, Revision 07.2015. 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 1840 of the MPEP.  The following is a brief summary of section 1840.

1840 The International Searching Authority

The United  States Patent and Trademark Office (USPTO) agreed to and was appointed by the  PCT Assembly, to act as an International Searching Authority. As such an  Authority, the primary functions are to establish (1) international search  reports and (2) for international applications having an international filing  date on or after January 1, 2004, written opinions.

 

MPEP Q & A 14: Request for Simultaneous Issue

mpep-podcast-800

Question:

What must a request for simultaneous issue contain?

Answer:

The request must contain the following information about each allowed application for which simultaneous issue is requested; application number, filing date, name(s) of inventor(s), title of invention, and date of allowance.

Chapter Details:

The answer to this question can be found in chapter 1300 of the MPEP. This chapter covers Allowance and Issue.

The answer is from the 9th Edition, Revision 07.2015. 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 1306.02 of the MPEP.  The following is a brief summary of section 1306.02.

1306.02   Simultaneous Issuance of Patents

Where  applications have been allowed and a Notice of Allowance and Fee(s) Due has  been mailed in each application, a request for simultaneous issuance will be  granted. Unless all the applications have reached this stage of processing, or  a specific requirement of the regulations is involved, a request for  simultaneous issuance generally will not be granted.

The  request must contain the following information about each allowed  application for which simultaneous issue is requested; application number, filing  date, name(s) of inventor(s), title of invention, and date of allowance.

MPEP Q & A 13: Term of Utility vs. Design Patent

mpep-podcast-800

Question:

What is the term of a utility patent versus the term of a design patent?

Answer:

The term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from the U.S. filing date; or if the application contains a specific reference to an earlier application, 20 years from the earliest effective U.S. filing date, while the term of a design patent is 15 years measured from the date of grant, if the design application was filed on or after May 13, 2015 (or 14 years if filed before May 13, 2015).

Chapter Details:

The answer to this question can be found in chapter 1500 of the MPEP. This chapter covers Design Patents.

The answer is from the 9th Edition, Revision 07.2015. 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 1502.01 of the MPEP.  The following is a brief summary of section 1502.01.

1502.01    Distinction Between Design and Utility Patents

In general terms, a “utility patent” protects the way an article is used and works,while a “design patent” protects the way an article looks. This section further outlines the common differences between design and utility patents.