MPEP Q and A Podcast

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:…

Question: When is a reference analogous art to the claimed invention? Answer: A reference is analogous art to the claimed…

Question: What must an appellant file if he or she wishes to reinstate an appeal after prosecution is reopened? Answer:…

Question: An error in a recorded assignment document will be corrected by the Assignment Division provided a “corrective document” is…

Question: What is one consequence that may result where the patent owner fails to make a timely appeal after the…

Question: What is the order of arrangement for the specification? Answer: The following order of arrangement is preferable in framing…

Question: Name 2 individuals who may grant written authority to status information in a non-published, pending or abandoned application. Answer:…

Question: List 2 requirements of the summary of abstract. Answer: The summary of abstract should preferably be between 50 and…

Question: What does 35 U.S.C. 102(a)(2) provide? Answer: AIA 35 U.S.C. 102(a)(2) provides that a person is not entitled to…

Question: In addition to the list of all patents, publications, U.S. applications, or other information submitted for consideration by the…

Question: What must a petition filed on or after September 16, 2012 be accompanied by to correct the inventorship in…

Question: List one way inter partes reexamination differs from ex parte reexamination. Answer: Inter partes reexamination differs from ex parte…

Question: List two computer functions recognized to be well‐understood, routine, and conventional functions when they are claimed in a merely…

Question: Name two times when an applicant may want to consider an explicit petition for foreign filing licenses. Answer: Explicit…