MPEP Q & A 41: Withdrawing an Application From Issue After Payment of the Issue Fee

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Question:

Why might the USPTO withdraw an application from issue after payment of the issue fee?

Answer:

The USPTO might withdraw an application from issue after payment of the issue fee due to:

  • (1) a mistake on the part of the Office:
  • (2) a violation of 37 CFR 1.56 or illegality in the application;
  • (3) unpatentability of one or more claims; or
  • (4) for interference or derivation.

Chapter Details:

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

Section Summary:

This question and answer comes from section 1308 of the MPEP.  The following is a brief summary of section 1308.

1308 Withdrawal From Issue

This section covers the withdrawal of an  application from issue. Specific topics discussed include the withdrawal from  issue at the initiative of the applicant both prior to and after the payment of  the issue fee.  Withdrawal from issue at  the initiative of the Office is also covered.

MPEP Q & A 40: Situations Where There May be a Remand For Examiner Action Not For Further Consideration of a Rejection

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Question:

Name two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection.

Answer:

The following are two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection:

  • A remand to consider an Information Disclosure Statement; and
  • A remand for the examiner to consider a reply brief.

Chapter Details:

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

Section Summary:

This question and answer comes from section 1211.01 of the MPEP.  The following is a brief summary of section 1211.01.

1211.01   Remand by Board for  Further Consideration of Rejection

A substitute examiner’s answer written in response to a remand by the Board for consideration of a rejection pursuant to 37 CFR 41.50(a)(1) may set forth a new ground of rejection. This section further covers a remand by the Board for further consideration of rejection.

MPEP Q & A 39: Types of Applications That Will Not be Published

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Question:

List 2 types of applications that will not be published.

Answer:

The Office will not publish the following applications:

  • Provisional applications;
  • Design applications;
  • International design applications; and
  • Reissue applications (because reissue applications are not kept confidential).

Chapter Details:

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

Section Summary:

This question and answer comes from section 1120 of the MPEP.  The following is a brief summary of section 1120.

1120    Eighteen-Month Publication  of Patent Applications 

This section covers details on the publication of patent applications after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought.  General details, exceptions, requirements, and projected publication dates are all discussed.

MPEP Q & A 38: Common Types of Linking Claims

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Question:

What are the most common types of linking claims?

Answer:

The most common types of linking claims which, if allowable, act to prevent restriction between inventions that can otherwise be shown to be divisible, are

  • (A) genus claims linking species claims; and
  • (B) subcombination claims linking plural combinations.

Chapter Details:

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

Section Summary:

This question and answer comes from section 809 of the MPEP.  The following is a brief summary of section 809.

809 Linking Claims

There  are a number of situations which arise in which an application has claims to  two or more properly divisible inventions, so that a requirement to restrict  the claims of the application to one would be proper, but presented in the same  case are one or more claims (generally called “linking” claims)  which, if allowable, would require rejoinder of the otherwise divisible inventions.  Further details on linking claims are covered here.

MPEP Q & A 37: Non-Structural Generic Placeholders Invoking 35 USC 112(f)

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Question:

List 2 non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6.

Answer:

The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6:

  • “mechanism for,”
  • “module for,”
  • “device for,”
  • “unit for,”
  • “component for,”
  • “element for,”
  • “member for,”
  • “apparatus for,”
  • “machine for,” or
  • “system for”

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 2181 of the MPEP.  The following is a brief summary of section 2181.

2181    Identifying and  Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph  Limitation

This section sets forth guidelines for the examination of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, “means or step plus function” limitations in a claim. It covers the steps for determining whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A description is necessary to support a claim limitation which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.

This section covers how to determine 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph compliance when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This section also covers how to determine whether 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph support exists.

 

MPEP Q & A 36: Documents a Person Acting in a Representative Capacity May Not Sign

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Question:

List two documents a person acting in a representative capacity may not sign.

Answer:

A person acting in a representative capacity may not sign:

  • a power of attorney,
  • a document granting access to an application,
  • a change of correspondence address,
  • a terminal disclaimer, or
  • a request for an express abandonment without filing a continuing application.

Chapter Details:

The answer to this question can be found in chapter 400 of the MPEP 9th Edition, Revision 07.2015. This chapter covers Representative of Applicant or Owner.

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 402.03 of the MPEP.  The following is a brief summary of section 402.03.

402.03   Signature Requirements for  Papers Filed in an Application

This section covers the signature requirements for papers filed in an application.

MPEP Q & A 35: Example of What an Oath or Declaration Must Do

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Question:

List one example of what an oath or declaration must do.

Answer:

An oath or declaration must:

  • identify the inventor or joint inventor executing the oath or declaration by his or her legal name;
  • identify the application to which it is directed;
  • include a statement the person executing the oath or declaration believes the named inventor or joint inventors to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and
  • state that the application was made or authorized to be made by the person executing the oath or declaration.

Chapter Details:

The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of 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:

This question and answer comes from section 602.01 of the MPEP.  The following is a brief summary of section 602.01.

602.01 Inventorship

The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in 37 CFR 1.64. This section covers details about naming inventorship in applications filed on or after September 16, 2012.

MPEP Q & A 34: Item an Applicant May Submit as Objective Evidence That Common Ownership Existed

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Question:

Name one item that an applicant may submit, in addition to a statement regarding common ownership as objective evidence that common ownership existed?

Answer:

The applicant may submit the following evidence:

  • (A) Reference to assignments recorded in the U.S. Patent and Trademark Office which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s);
  • (B) Copies of unrecorded assignments which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s) are filed in each of the applications;
  • (C) An affidavit or declaration by the common owner which states that there is common ownership and states facts which explain why the affiant or declarant believes there is common ownership, which affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization; and
  • (D) Other evidence which establishes common ownership of the application and the commonly owned applied art.

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers 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 and answer comes from section 717.02(b) of the MPEP.  The following is a brief summary of section 717.02(b).

717.02(b)   Evaluating Whether the  Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked

This section covers details on evaluating whether the prior art exception under AIA 35 U.S.C. 102(b)(2)(c) is properly invoked.  It includes a discussion on when the exception can be used as well as when the exception does not apply.  In addition, it covers evidence required to establish common ownership and evidence required to establish a joint research agreement.

MPEP Q & A 33: What is a Divisional Application?

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Question:

What is a divisional application?

Answer:

A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed in the earlier or parent 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 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 201.06 of the MPEP.  The following is a brief summary of section 201.06.

201.06   Divisional Application

This section describes divisional applications which cover instances when an inventor initially tries to patent an invention that is actually two or more separate inventions. In this instance, he or she will be required to cut out some of the claims from the original patent application. If he or she still wants to patent the invention(s) that were cut out, a separate application called a divisional application should be filed. The divisional application will have the same filing date as the original (now known as the parent) application.

MPEP Q & A 32: Circumstance Where Joint Ownership Exists

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Question:

Name one circumstance where joint ownership exists.

Answer:

Joint ownership occurs when any of the following cases exist:

  • Multiple partial assignees of the patent property;
  • Multiple inventors who have not assigned their right, title and interest; or
  • A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest.

Chapter Details:

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

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 301 of the MPEP.  The following is a brief summary of section 301.

301     Ownership/Assignability of Patents and Applications

This section defines common terms and issues dealing with the ownership/assignability of patents and applications including ownership, assignment, licensing, individual and joint inventorship, making the assignment of record, and accessibility.