MPEP Q and A Podcast

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…

Question: List 2 submission types that may not be filed via EFS Web. Answer: The following is a list of…

Question: What is a complete nonprovisional application comprised of? Answer: A complete nonprovisional application comprises the following: a specification, including…

Question: Name two fees that must be paid upon filing a request for prioritized examination. Answer: Upon filing the request…

Question: When the publication or issue date is later than the current date (i.e., the date of the request), who…

Question: Must a claim be identified to a correct category of subject matter? Answer: It is not necessary to identify…

Question: Provide an example of a non-limiting claim that is not directed to any of the statutory categories. Answer: Examples…

Question: A practitioner shall provide competent representation to a client. What does competent representation to a client entail? Answer: Competent…

Question: Name one circumstance where applicants must timely file a notice of foreign filing to avoid abandonment of a U.S.…

Question: Name one item any further written opinion established by the International Preliminary Examining Authority should set forth. Answer: Any…

Question: List one consequence for when the patent owner fails to file a timely response to any Office action prior…

Question: Would a computer-implemented method that is deemed novel and non-obvious be effected by the tax strategy provision even if…

Question: What are the most common basis for filing a reissue application? Answer: The most common bases for filing a…

Question: When is a 35 U.S.C. 102 rejection with multiple references proper? Answer: A 35 U.S.C. 102 rejection over multiple…

Question: Is it true that living subject matter with markedly different characteristics from any found in nature, such as the…