MPEP Q and A Podcast

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…

Question: Can an Appellant request to reopen prosecution if the examiner’s answer does not have a rejection that is designated…

Question: What are the two criteria for subject matter eligibility? Answer: First, the claimed invention must be in one of…

Question: Can maintenance fees be paid in cash? Answer: Maintenance fees may not be paid in cash. A maintenance fee…

Question: Name two ways a patent may be corrected or amended. Answer: A patent may be corrected or amended in…

Question: What is the definition of fundamental economic practices? Answer: The courts have used the phrases “fundamental economic practices” or…

Question: List two statutes that grounds for post-grant review may be raised for. Answer: Grounds for post-grant review include grounds…

Question: What does the broadest reasonable interpretation (BRI) do? Answer: The BRI sets the boundaries of the coverage sought by…

Question: When will a practitioner be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct? Answer: A…

Question: An attorney of record may have to submit information in reply to an Office action, a reissue application, or…

Question: List two situations where a practitioner may withdraw from representing a client according to 37 C.F.R. 11.116. Answer: A…

Question: When is the on-sale bar of pre-AIA 35 U.S.C. 102(b) triggered? Answer: The on-sale bar of pre-AIA 35 U.S.C.…