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by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), or (not entered). The status identifier (withdrawn – currently amended) is also acceptable for a withdrawn claim that is being currently amended.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

MPEP Q & A 135: When May the Prior Art Date of a Reference Under Pre-AIA 35 U.S.C. 102(e) be the International Filing Date?

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Question:

When may the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) be the international filing date?

Answer:

The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language.

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 2136 of the MPEP.  The following is a brief summary of section 2136.

2136 Pre-AIA 35 U.S.C. 102(e)

This section covers pre-AIA 35 U.S.C. 102(e). Pre-AIA 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under pre-AIA 35 U.S.C. 102(e) as of their respective U.S. filing dates, including certain international filing dates.

This section includes a discussion on how statutory invention registrations are eligible as prior art under 35 U.S.C. 102 and pre-AIA 35 U.S.C. 102(e).  In addition, defensive publications are not prior art as of their filing date.  It is only prior art as of its publication date.

 

MPEP Q & A 134: Who is Barred From Filing a Request for Ex Parte Reexamination of a Patent?

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Question:

Who is barred from filing a request for ex parte reexamination of a patent?

Answer:

“Any person” may file a request for ex parte reexamination of a patent, unless prohibited by AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). Accordingly, there are no types of “persons” who are excluded from being able to seek reexamination.

  • Corporations and/or governmental entities are included within the scope of the term “any person.”
  • The only “person” who is barred from filing a request for ex parte reexamination of a patent is one who is barred from doing so by the estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) based on inter partes review and post grant review, respectively, once the estoppel attaches.

Chapter Details:

The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers Citation of Prior Art and Ex Parte Reexamination 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 2212 of the MPEP.  The following is a brief summary of section 2212.

2212 Persons Who May File a Request for Ex Parte Reexamination

Anyone, including corporations and government entities, may file a request for ex parte reexamination of a patent.

MPEP Q & A 133: Correspondence That May be Transmitted by Facsimile.

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Question:

Name two types of correspondence that may be transmitted by facsimile.

Answer:

Types of correspondence which may be transmitted by facsimile include:

  • CPAs (available for design applications only), amendments, declarations, petitions, information disclosure statements (IDS), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examination (RCEs), assignment documents, issue fee transmittals and authorizations to charge deposit accounts.

Chapter Details:

The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and handling of mail and papers.

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 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.

MPEP Q & A 132: What are the Three Separate and Distinct Requirements of the First Paragraph of 35 U.S.C. 112?

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Question:

What are the three separate and distinct requirements of the first paragraph of 35 U.S.C. 112?

Answer:

35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph require that the specification include the following three separate and distinct requirements:

  • A written description of the invention;
  • The manner and process of making and using the invention (the enablement requirement); and
  • The best mode contemplated by the inventor of carrying out his 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 2161 of the MPEP.  The following is a brief summary of section 2161.

2161 Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph

Pre-AIA 35 U.S.C. 112 is based on 6 different paragraphs; paragraphs (1) through (6) while AIA 35 U.S.C. 112 includes paragraphs (a) through (f). This section discusses the three separate requirements for the specification under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.

Pre-AIA first paragraph or AIA (a) both state that the specification must include a written description of the invention, enablement, and best mode of carrying out the claimed invention. In addition, both state that the three requirements are separate and distinct from each other.