MPEP Q and A Podcast

Question: Can a patent owner avoid double patenting by disclaiming the earlier patent? Answer: “[A] patent owner cannot avoid double…

Question: List two concepts and products the courts have identified as examples of laws of nature or natural phenomena. Answer:…

Question: Name one example of non-limiting claims not directed to any of the statutory categories. Answer: Non-limiting examples of claims…

Question: Who is the applicant for a patent? Answer: The applicant for patent is all parties identified as the applicant…

Question: What is a mathematical relationship? Answer: A mathematical relationship is a relationship between variables or numbers. A mathematical relationship…

Question: How can patent applications be sent to the U.S. Patent and Trademark Office? Answer: All applications (provisional and nonprovisional)…

Question: What are the application filing dates for purposes of determining whether a patent is subject to payment of maintenance…

Question: Can social media websites like Facebook be a source of prior art? Answer: Social media websites on the Internet,…

Question: What are the types of papers that may be filed and processed electronically? Answer: Registered users may use EFS-Web…

Question: When does a Markush claim contain an ‘improper Markush grouping’? Answer: A Markush claim contains an “improper Markush grouping”…

Question: When may the claims of a new application be finally rejected in the first Office action? Answer: The claims…

Question: Who will be listed in the assignee section of a patent? Answer: The real party in interest will be…

Question: If the Office made a material mistake in a patent application publication that is apparent from the Office records…

Question: When is a rejection on the ground of lack of utility appropriate? Answer: A rejection on the ground of…

Question: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed…

Question: What are the “Appropriate circumstances” to vacate the order granting reexamination? Answer: “Appropriate circumstances” exist to vacate the order…

Question: Document size fees are only applicable to non-patent documents having greater than what number of pages? Answer: The document…

Question: AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might…

Question: AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that are available as prior art as of…

Question: What was Section 42.208 paragraph (c) amended to in the supplement entitled: Amendments to the Rules of Practice for…

Question: When may the OPAP object to and require corrected drawings within a set time period? Answer: The OPAP may…

Question: What is the issue of correlation as related to matters of invitro/in vivo? Answer: The answer to this question…

Question: What was Section 42.23 paragraph (b) amended to in the supplement entitled: Amendments to the Rules of Practice for…

Question: What is the time limit for establishing the International Search Report and the Written Opinion of the International Searching…

Question: When did the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal…

Question: According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal…

Question: Can attorney arguments take the place of evidence? Answer: No, the arguments of counsel cannot take the place of…

Question: According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal…

Question: When may an abandoned application be used as prior art? Answer: An abandoned patent application may become evidence of…

Question: What is the executive summary of the PDF titled ‘Amendments to the Rules of Practice for Trials Before the…