MPEP Q and A Podcast

Question: What is the definition of a national application as described in chapter 200 of the MPEP? Answer: A national…

Question: Should a dependent claim that does not specify a further limitation of the subject matter claimed be rejected under…

Question: What should an examiner’s answer in an appeal include? Answer: An examiner’s answer should include, under appropriate headings, in…

Question: Is a drawing an essential element of a design patent application? Answer: Every design patent application must include either…

Question: When is a drawing usually not considered necessary for the understanding of an invention under 35 USC 113 (first…

Question: What is the difference between applicant information, correspondence information, and application information? Answer: Applicant information includes the name, residence,…

Question: What does the Office need at the time of receipt in order to accord the international filing date the…

Question: What must a petition for an unintentionally delayed claim be filed with? Answer: A petition for an unintentionally delayed…

Question: How can petitions to withdraw an application from issue under 37 CFR 1.313(c) be sent to the USPTO? Answer:…

Question: What should a petition for retroactive license include? Answer: A petition for retroactive license shall include: (1) A listing…

Question: Can a petition under 37 CFR 1.138(c) stop publication of an application? Answer: A petition under 37 CFR 1.138(c)…

Question: Does the petition to make special apply to patent applications for inventions dealing with energy resources? Answer: The U.S.…

Question: How can a provisional obviousness rejection be overcome? Answer: A provisional obviousness rejection can be overcome by: Arguing patentability…

Question: What does the final rule in the “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings…

Question: Have parties to AIA proceedings under Phillips required expanded page limits or otherwise incurred more expenses in their AIA…

Question: Name one instance when issuance of a NIRC action would be proper in an inter partes reexamination proceeding. Answer:…

Question: What should the Applicant Initiated Interview Request form identify? Answer: The Applicant Initiated Interview Request form should identify: the…

Question: What are the two final rules dealing with the claim construction standard as implemented in the supplement entitled “Changes…

Question: Name two types of patents that may not use the provisions of 37 C.F.R. 1.114. Answer: The provisions of…

Question: What must an application filed under 37 CFR 1.53(d) be filed before the earliest of? Answer: An application filed…

Question: A subject matter eligibility rejection under Step 2 should provide an explanation for each part of the Step 2…

Question: When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for…

Question: List one of the basic characteristics of ex parte reexamination. Answer: The basic characteristics of ex parte reexamination are…

Question: What is the executive summary of the final rule when dealing with the claim construction standard that took effect…

Question: What does AIA 35 U.S.C. 102(b) discuss? Answer: AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established…

Question: What is the 3-step test for recapture? Answer: The three-step test for recapture is: First, we determine whether, and…

Question: What is the difference between derivation and priority of invention? Answer: Derivation and priority of invention both focus on…

Question: Can a patent practitioner ever reveal information relating to the representation of a client when the client has not…

Question: What does a petition under 37 C.F.R. 1.78 require? Answer: A petition under 37 CFR 1.78(b) requires: the reference…

Question: List a concept related to tracking or organizing information. Answer: Examples of concepts related to tracking or organizing information…