MPEP Q and A Podcast

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…

Question: What is a covered business method patent according to the AIA? Answer: The AIA specifies that a covered business…

Question: How can applicants rebut a prima facie case of obviousness based on overlapping ranges? Answer: Applicants can rebut a…

Question: Who must sign the power of attorney for applications filed on or after September 16, 2012? Answer: For applications…

Question: What must a statement under 37 CFR 1.97(e) state? Answer: A statement under 37 CFR 1.97(e) must state either:…

Question: When must a third party submission be made? Answer: A third-party submission must be filed prior to the earlier…

Question: 35 U.S.C. 322 covers petitions involved in post-grant reviews. 35 U.S.C. 322(a) provides that a petition filed under 35…

Question: In what two situations is the examiner not responsible for examining the sufficiency of the showing? Answer: The examiner…

Question: A Certificate of correction may be used in order to correct an issued patent as long as the filing…

Question: List an advantage of filing a CPA compared to a continuation or divisional application. Answer: The following list includes…

Question: List 2 times when a request for continuing examination may be proper. Answer: A request for continued examination may…

Question: What may an applicant do in response to a rejection based on failure to claim patent-eligible subject matter? Answer:…