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

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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

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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

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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

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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

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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.