MPEP Q & A 145: Methods For Paying a Maintenance Fee

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Question:

How can a maintenance fee be paid?

Answer:

A maintenance fee may be paid:

  • with cash
  • with Treasury notes
  • with national bank notes
  • with post office money orders
  • with certified checks
  • over the internet by electronic funds transfer (EFT), credit card, or deposit account payment methods

Chapter Details:

The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers Maintenance Fees.

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 2522 of the MPEP.  The following is a brief summary of section 2522.

2522 Methods of Payment

This section outlines the ways a maintenance fee may be paid. In addition, it covers instances when the payment will not be accepted (like, for instance, when the payment is less than the required amount).

MPEP Q & A 144: What Should a Subject Matter Eligibility Rejection Under Step 2 Do?

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Question:

What should a subject matter eligibility rejection under Step 2 do?

Answer:

A subject matter eligibility rejection under Step 2 should:

  • Identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception;
  • Identify any additional elements (specifically point to claim features/limitations/steps) recited in the claim beyond the identified judicial exception; and
  • Explain the reason(s) that the additional elements taken individually, and also taken as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception.

Chapter Details:

The answer to this question can be found in the following supplement: Memo dated May 4, 2016, Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question and answer comes from the following supplement: Memo dated May 4, 2016, Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection.

MPEP Q & A 143: Who Decides Petitions for Derivation and Conducts Any Ensuing Derivation Proceeding?

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Question:

Who decides petitions for derivation and conducts any ensuing derivation proceeding?

Answer:

The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensuing derivation proceeding.

Chapter Details:

The answer to this question can be found in the following supplement: Derivation Proceeding Final Rules. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question and answer comes from the following supplement: Derivation Proceeding Final Rules.

MPEP Q & A 142: Examples of Evidence Under 37 C.F.R. 1.131(a)

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Question:

List 2 examples of evidence under 37 C.F.R. 1.131(a).

Answer:

The allegations of fact might be supported by submitting as evidence one or more of the following:

  • (A) attached sketches;
  • (B) attached blueprints;
  • (C) attached photographs;
  • (D) attached reproductions of notebook entries;
  • (E) an accompanying model;
  • (F) attached supporting statements by witnesses, where verbal disclosures are the evidence relied upon.
  • (G) testimony given in an interference. Where interference testimony is used, the applicant must point out which parts of the testimony are being relied on; examiners cannot be expected to search the entire interference record for the evidence;
  • (H) documents submitted under the Disclosure Document Program (discontinued February 1, 2007) may be used as documentary evidence of conception.

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 715.07 of the MPEP.  The following is a brief summary of section 715.07.

715.07 Facts and Documentary Evidence

The essential thing to be shown under 37 CFR 1.131(a) is priority of invention and this may be done by any satisfactory evidence of the fact. This section outlines the evidence that may be submitted. For instance sketches, photographs, and models may be submitted as evidence.

In situations where the dates of the exhibits have been removed or blocked off, the matter of dates can be taken care of in the body of the oath or declaration. This section also covers three ways to show prior invention.

MPEP Q & A 141: Issues That Must be Completed During the Examination Before an Interference May be Called

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Question:

What are the three major issues that must be completed during the examination before an interference may be called?

Answer:

The three major issues that must be completed during the examination are:

  • All pending claims must be allowed, finally rejected, or canceled
  • All petitions must be decided
  • All appeals from a final rejection must be completed

Chapter Details:

The answer to this question can be found in chapter 2300 of the MPEP. This chapter covers Interference Proceedings.

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 2303 of the MPEP.  The following is a brief summary of section 2303.

2303 Completion of Examination

The examination should be completed on all other issues before an interference is called, which means all pending claims must be allowed, finally rejected, or canceled, all petitions must be decided, and all appeals from the final rejection must be completed. Further details on the completion of the examination are discussed in this section.

MPEP Q & A 140: Status Identifiers Expected to Follow the Claim Number in an Amendment to the Claims

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Question:

List two status identifiers that are expected to follow the claim number in an amendment to the claims.

Answer:

Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), or (not entered). The status identifier (withdrawn – currently amended) is also acceptable for a withdrawn claim that is being currently amended.

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 be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 714 of the MPEP.  The following is a brief summary of section 714.

714 Amendments, Applicant’s Action

This section covers amendments and the applicant’s action including when an applicant may amend and the manner of making amendments under 37 C.F.R. 1.121. There are many rules governing amendments that are discussed in 37 C.F.R. 1.121 and this section. These consist of amendments to the specification and amendments to the claims including status identifiers, markings to show the changes, claim text, claim numbering, and acceptable alternative status identifiers. In addition, amendments in reexamination proceedings and reissue applications are also discussed.

MPEP Q & A 139: Fees the Office Might Refund

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Question:

What fees might the Office refund?

Answer:

The Office may refund:

  • A fee paid by mistake (e.g., fee paid when no fee is required); or
  • Any fee paid in excess of the amount of fee that is required.

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 be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 607.02 of the MPEP.  The following is a brief summary of section 607.02.

607.02 Returnability of Fees

This section covers the returnability of fees. This includes the manner of making a refund, the time period for requesting a refund, fees paid by deposit accounts, later establishment of small entity status, and refund of the search fee and excess claims fee.

MPEP Q & A 138: When May a Process and Apparatus for its Practice be Shown to be Distinct Inventions?

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Question:

When may a process and apparatus for its practice be shown to be distinct inventions?

Answer:

Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or by hand; or (B) that the apparatus as claimed can be used to practice another materially different process.

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.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 806.05(e) of the MPEP.  The following is a brief summary of section 806.05(e).

806.05(e) Process and Apparatus for Its Practice

Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or by hand; or (B) that the apparatus as claimed can be used to practice another materially different process.

MPEP Q & A 137: Who May a Party Dissatisfied with a Final Decision in a Derivation Proceeding Appeal To?

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Question:

Who may a party dissatisfied with a final decision in a derivation proceeding appeal to?

Answer:

A party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit.

Chapter Details:

The answer to this question can be found in the following supplement: Derivation Proceeding Final Rules. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question and answer comes from the following supplement: Derivation Proceeding Final Rules.

MPEP Q & A 136: What a Reasons Document Should Include

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Question:

The reasons document explains why each item of information does or does not raise a substantial new question of patentability (or SNQ) in a supplemental examination. What should a reasons document include?

Answer:

The reasons document explains why each item of information does or does not raise a SNQ. The reasons document should include:

  • A statement that the item of information raises a SNQ and identify the claims for which the SNQ is raised;
  • Where appropriate, a statement that the item of information does not raise a SNQ and identify the claims for which a SNQ is not raised; and
  • A brief statement of the basis for the determination. This describes what the reasons document should point out if the examiner determines that a SNQ is raised, and if the examiner determines that a SNQ is not raised.

Chapter Details:

The answer to this question can be found in chapter 2800 of the MPEP. This chapter covers Supplemental Examination.

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 2816.03 of the MPEP.  The following is a brief summary of section 2816.03.

2816.03 Content of the Determination

This section covers the content of the determination, which is called the reasons document. This document explains why each item of information does or does not raise a substantial new question of patentability (SNQ).