MPEP Q and A Podcast

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.…

Question: What are the 4 categories of invention recited in 35 U.S.C. 101? Answer: The four categories of invention recited…

Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings…

Question: Can a post-grant review be instituted if, before the date on which the petition for such a review is…

Question: When can a combination as claimed show that inventions are distinct? Answer: Inventions are distinct if it can be…

Question: How can a maintenance fee be paid? Answer: A maintenance fee may be paid: with cash with Treasury notes…

Question: What should a subject matter eligibility rejection under Step 2 do? Answer: A subject matter eligibility rejection under Step…

Question: Who decides petitions for derivation and conducts any ensuing derivation proceeding? Answer: The Patent Trial and Appeal Board will…

Question: List 2 examples of evidence under 37 C.F.R. 1.131(a). Answer: The allegations of fact might be supported by submitting…

Question: What are the three major issues that must be completed during the examination before an interference may be called?…

Question: List two status identifiers that are expected to follow the claim number in an amendment to the claims. Answer:…

Question: What fees might the Office refund? Answer: The Office may refund: A fee paid by mistake (e.g., fee paid…

Question: When may a process and apparatus for its practice be shown to be distinct inventions? Answer: Process and apparatus…

Question: Who may a party dissatisfied with a final decision in a derivation proceeding appeal to? Answer: A party dissatisfied…

Question: The reasons document explains why each item of information does or does not raise a substantial new question of…

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

Question: Who is barred from filing a request for ex parte reexamination of a patent? Answer: “Any person” may file…

Question: Name two types of correspondence that may be transmitted by facsimile. Answer: Types of correspondence which may be transmitted…

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

Question: What does an applicant who uses the Patent Cooperation Treaty gain the benefit of? Answer: An applicant who uses…