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.

MPEP Q & A 5: Situations in Which Drawings are Not Considered Necessary

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Question:

List a situation in which drawings are usually not considered necessary for the  understanding of the invention.

Answer:

It has been USPTO practice to treat an application that contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the invention. Other situations in which drawings are usually not considered necessary for the understanding of the invention are:

  • Coated articles or products;
  • Articles made from a particular material or composition;
  • Laminated structures;
  • Articles, apparatus, or systems where sole distinguishing feature is presence of a particular material.

Chapter Details:

The answer to this question can be found in chapter 600 of the MPEP. This chapter covers the parts, form and content of the application.

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:

The answer to this question can be found in chapter 600 of the MPEP. This chapter covers the parts, form and content of the application.

601.01(f)    Applications Filed Without Drawings

An “applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented.” Applications filed without drawings are initially inspected to determine whether a drawing is referred to in the specification, and if not, whether a drawing is necessary for the understanding of the invention.

This section covers what happens in instances where the application does not require a drawing as well as those that do require drawings, but was filed without.

MPEP Q & A 4: Written Authority to Grant Access to a Provisional Application

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Question:

Name two individuals who through written authority may grant access to a provisional application.

Answer:

In provisional applications, access will only be given to parties with written authority from the following:

  • a named inventor
  • the assignee of record
  • the attorney or agent of record
  • or, for an application filed on or after September 16, 2012, an applicant other than an inventor.

Chapter Details:

The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing. The answer is from the 9th Edition, Revision 07.2015.

Section Summary:

This question comes from section 104 of the MPEP.  The following is a brief summary of section 104.

104    Power to Inspect Application

This section discusses who has the authority to grant access to applications. The authority to grant access is different for applications filed before and after September 16, 2012. This section also discusses who may access patent applications (both provisional and nonprovisional) and Board records.

MPEP Q & A 3: Significant Differences Between Nonprovisional and Provisional Applications

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Question:

List two significant differences between nonprovisional applications and provisional applications.

Answer:

The following list includes significant differences between nonprovisional applications and provisional applications:

  • No claim is required in a provisional application.
  • No oath or declaration is required in a provisional application.
  • Provisional applications will not be examined for patentability.
  • A provisional application is not entitled to claim priority to any foreign application or the benefit of any earlier filed national application.
  • A design patent application is not entitled to claim the benefit of a provisional application

Chapter Details:

The answer to this question can be found in chapter 200 of the MPEP. This chapter covers types, cross-noting, and status of application. The question and answer is from the 9th Edition, Revision 07.2015.

Section Summary:

This question comes from section 201.01of the MPEP.  The following is a brief summary of section 201.01

201     Types of Applications

An applicant may file a utility, plant or design patent application. This section covers the many different types of applications including national and international patent applications along with the different types of filings (i.e. provisional, nonprovisional, divisional, etc …).

 

MPEP Q & A 2: Correspondence That May Not be Transmitted by Facsimile

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Question:

Name two types of correspondence that may not be transmitted by facsimile.

Answer:

Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in
the following situations:

  • A document that is required by statute to be certified
  • A national patent application specification and drawing (provisional or nonprovisional) or other correspondence for the purpose of obtaining an application filing date, other than a continued prosecution application;
  • An international application for patent;
  • A copy of the international application and the basic national fee necessary to enter the national stage;
  • A third-party submission.
  • Correspondence relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings.
  • Color drawings;
  • A request for reexamination.
  • Correspondence to be filed in a patent application subject to a secrecy order and directly related to the secrecy order content of the application; and
  • Correspondence to be filed in a contested case or trial before the Patent Trial and Appeal Board, except as the Board may expressly authorize;
  • An international design application;
  • A request for supplemental examination.

Chapter Details:

The answer to this question can be found in chapter 500 of the MPEP. This chapter covers the receipt and handling of mail and papers. The question and answer is from the 9th Edition, Revision 07.2015.

Section Summary:

This question comes from section 502.01 of the MPEP.  The following is a brief summary of section 502.01.

 

502.01    Correspondence Transmitted by Facsimile

This section covers facsimile transmission including what type of correspondence may be submitted via facsimile and those that may not. The date the complete transmission is received is considered the date of receipt. Transmission on holidays and weekends are also covered. The receipt procedure for filing a CPA by fax is discussed.