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

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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

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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

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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.

MPEP Q & A 12: Two Separate and Distinct Requirements for 35 U.S.C. 112(b)

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Question:

What are the two separate and distinct requirements of 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph?

Answer:

35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph contains two separate and distinct requirements:

  • The first one is that the claim(s) set forth the subject matter applicants regard as the invention, and
  • The second one is that the claim(s) particularly point out and distinctly claim the invention.

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 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 2171 of the MPEP.  The following is a brief summary of section 2171.

2171    Two Separate Requirements for Claims Under 35 U.S.C.  112 (b) or Pre-AIA 35 U.S.C. 112, Second Paragraph

This section covers the two separate requirements for claims under the second paragraph or paragraph (b) of 35 U.S.C. 112. These requirements include that the claims must set forth the subject matter that the inventor or a joint inventor regards as the invention; and the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant.

 

MPEP Q & A 11: Items Required in an Appeal Brief

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Question:

List two items which are required in an appeal brief.

Answer:

The specific items required in an appeal brief are:

  • (i) Real party in interest.
  • (ii) Related appeals, interferences, and trials.
  • (iii) Summary of claimed subject matter.
  • (iv) Argument.
  • (v) Claims appendix.

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 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 1205.02 of the MPEP.  The following is a brief summary of section 1205.02.

1205.02 Appeal  Brief Content

The arguments in an appeal brief must be responsive to every ground of rejection stated by the Examiner along with explanation of why the examiner erred in the ground of rejection. This section further covers the content required in an appeal brief. The specific items required include the real party of interest, related appeals, interferences, and trials, a summary of claimed subject matter, an argument, and a claims appendix. Each of these required items is discussed in detail.

MPEP Q & A 10: Contesting an Objection

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Question:

What is one way an applicant may contest an objection?

Answer:

An applicant may contest an objection by:

  • asking the examiner to reconsider it.
  • filing a petition to the Commissioner.

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers the examination of applications.

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 comes from section 706.01 of the MPEP.  The following is a brief summary of section 706.01.

706.01   Contrasted With Objections

This section covers the differences between rejections and objections.  The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board, while an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO.

MPEP Q & A 9: Two Types of Double Patenting Rejections

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Question:

What are the two types of double patenting rejections?

Answer:

There are generally two types of double patenting rejections.

  • One is the “same invention” type double patenting rejection based on 35 U.S.C. 101 which states in the singular that an inventor “may obtain a patent.”
  • The second is the “nonstatutory-type” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent.

Chapter Details:

The answer to this question can be found in chapter 800 of the MPEP. This chapter covers the Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting.

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 comes from section 804 of the MPEP.  The following is a brief summary of section 804.

804 Definition of Double Patenting

This section provides specific details on double patenting. Essentially, double patenting seeks to prevent the unjustified extension of patent rights beyond the term of a patent. This section covers when double patenting is possible along with the requirements of double patenting rejections. Obviousness type nonstatutory double patenting is also discussed including two-way obviousness.

This section also discusses disclaimers which may be used to disclaim or dedicate part of a patent term. The topics discussed include terms, terminal disclaimers, statutory double patenting rejections, and nonstatutory rejections.

MPEP Q & A 8: Filings Third-Party Submissions May Not Be Directed To

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Question:

List at least one type of filing that third-party submissions may not be directed to.

Answer:

Third-party submissions may not be directed to:

  • provisional applications,
  • issued patents,
  • reissue applications, and
  • reexamination proceedings.

Chapter Details:

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

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 1134.01 of the MPEP.  The following is a brief summary of section 1134.01.

1134.01   Third Party Submissions  Under 37 CFR 1.290  

This section covers third party submissions under 37 C.F.R. 1.290.  The America Invents Act (AIA) amended 35 U.S.C. 122 by providing a mechanism for third parties to submit printed publications in another party’s patent application. Third-party submissions under 37 CFR 1.99 were eliminated as of September 16, 2012.

This section covers the time for filing a third-party submission along with the content requirements for a third party submission.  The type of information that may be submitted in a third-party submission is limited to patents, published patent applications, and other printed publications of potential relevance to the examination of a patent application.  However, any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application.

 

MPEP Q & A 7: Type of Descriptions of the Interest Conveyed or the Transaction to Be Recorded

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Question:

List two examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified.

Answer:

Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:

  • assignment;
  • security agreement;
  • merger;
  • change of name;
  • license;
  • foreclosure;
  • lien;
  • contract; and
  • joint research agreement.

Chapter Details:

The answer to this question can be found in chapter 300 of the MPEP. This chapter covers ownership and assignment.

This 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 comes from section 302.07 of the MPEP.  The following is a brief summary of section 302.07.

302.07   Assignment Document Must  Be Accompanied by a Cover Sheet 

This section covers details on how the assignment document must be accompanied by a cover sheet.

MPEP Q & A 6: Applicant Initiated Interview Request Forms

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Question:

What should an Applicant Initiated Interview Request Form include?

Answer:

An Applicant Initiated Interview Request Form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed.

Chapter Details:

The answer to this question can be found in chapter 400 of the MPEP. This chapter covers representative of the applicant or owner.

The question 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 comes from section 408 of the MPEP.  The following is a brief summary of section 408.

408     Interviews With Patent Practitioner of Record

When an applicant is initiating a request for an interview, an “Applicant Initiated Interview Request” form should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.