MPEP Q and A Podcast

Question: What is essential material? Answer: “Essential material” is defined as that which is necessary to: provide a written description…

Question: What are the two statutory requirements that must be met before a Certificate of Correction for an applicant’s mistake…

Question: List three non-limiting examples of the types of characteristics considered by the courts when determining whether there is a…

Question: What 5 conditions should an examiner check for before requiring an applicant to add a claim to provoke an…

Question: List 3 examples of concepts courts have found to be laws of nature and natural phenomena. Answer: The types…

Question: What does the Patent Prosecution Highway or PPH attempt to accomplish? Answer: The Patent Prosecution Highway, or PPH enables…

Question: List one reason a practitioner should act as an advocate at a proceeding before a tribunal in which the…

Question: If a patent is assigned, will that change the “correspondence address” or “fee address”  used for maintenance fee purposes?…

Question: Can the Board defer action on a petition for a derivation proceeding? Answer: The Patent Trial and Appeal Board…

Question: Can a division of a fee between practitioners who are not in the same firm may be made? Answer:…

Question: Who may file a petition to institute a post-grant review? Answer: A person who is not the patent owner…

Question: What 3 components (in addition to the mandatory requirements) must an international design application designating the U.S. include? Answer:…

Question: List one item the applicant must establish under 35 U.S.C. 156(a)(1)-(5). Answer: 35 U.S.C. 156(a)(1)-(5) require that the applicant…

Question: Is it possible for an assignment in applications filed on or after September 16, 2012 to be utilized as…

Question: List two factors to be considered when determining whether there is sufficient evidence to support a determination that a…

Question: Do the changes to 35 U.S.C. 102 and 103 in the AIA apply to applications filed before March 16,…

Question: List one of the ways an inter partes reexamination proceeding may be concluded. Answer: Inter partes reexamination proceedings may…

Question: Who may file a petition for a covered business method patent review? Answer: A petitioner may not file a…

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

Question: Where may information material to patentability come from? Answer: Sources of information may include: co-workers trade shows communications from…

Question: What must an international application contain? Answer: Any international application must contain the following elements: request, description, claim or…

Question: When should a Certificate of Correction be filed instead of a reissue? Answer: While reissue is a vehicle for…

Question: What does bibliographic data include? Answer: Bibliographic data includes: inventor information; correspondence information; application information; representative information; domestic benefit…

Question: What are the three separate and distinct requirements required of the specification by 35 U.S.C. 112(a) and pre-AIA 35…

Question: When may a protest be submitted? Answer: A protest must be submitted prior to the mailing of a Notice…

Question: List one way possession may be shown. Answer: Possession may be shown in many ways. For example, possession may…

Question: What is the first step of the three-step process for the recapture rule? Answer: The first step of the…

Question: What three things does the relevance of long-felt need and the failure of others to the issue of obviousness…

Question: List one of the underlying factual inquiries of obviousness. Answer: The factual inquiries enunciated by the Court are as…

Question: What is the strongest rationale for combining references? Answer: The strongest rationale for combining references is a recognition, expressly…