The Patent Bar MPEP Q & A Podcast was Created to Help You Prepare for the Patent Bar Exam.

Study for the exam on the go. Each short (3 to 5 minute) episode covers a detailed question and answer from the MPEP. Included is a summary of the specific MPEP section the episode covers.

Episode List

We publish a new episode every Tuesday.  You can listen in here on our site or from iTunes. If you’re interested, please subscribe:

Here’s a list of every episode we’ve published (from newest to oldest):

MPEP Q & A 108: Computer Functions Recognized to be Well‐Understood, Routine, and Conventional Functions When They are Claimed in a Merely Generic Manner

Question: List two computer functions recognized to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner. Answer: The courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: Performing repetitive calculations, Receiving, processing, and storing data, […]

MPEP Q & A 107: Times When Explicit Petitions for Foreign Filing Licenses May Be Considered by Applicants

Question: Name two times when an applicant may want to consider an explicit petition for foreign filing licenses. Answer: Explicit petitions for foreign filing licenses may be considered by applicants when: the filing receipt license is not granted; the filing receipt has not yet been issued; there is no corresponding U.S. application; subject matter additional […]

MPEP Q & A 106: Indicia That a Continuing Reissue Application is Being Filed

Question: Name two indicia that a continuing reissue application is being filed. Answer: Indicia that a continuing reissue application is being filed are: A reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration. A specification and/or claims in proper double column reissue format. Amendments in proper format. A statement of assignee […]

MPEP Q & A 103: What Grounds for Seeking Inter Partes Review are Limited to Compared with Post-Grant Review

Question: What are the grounds for seeking inter partes review limited to compared with post-grant review? Answer: The grounds for seeking inter partes review are limited to issues raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications. In contrast, the grounds for seeking post-grant review […]

MPEP Q & A 101: Petition for a Derivation Proceeding

Question: What must a petition for a derivation proceeding provide? Answer: In a petition for a derivation proceeding, the petitioner must: (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application. Chapter Details: The […]

MPEP Q & A 100: Activities Used as an Indication of Commercial Exploitation

Question: List two activities that can be used as an indication of commercial exploitation? Answer: The following activities should be used by the examiner as indicia of this subjective commercial intent: Preparation of various contemporaneous “commercial” documents, e.g., orders, invoices, receipts, delivery schedules, etc.; Preparation of price lists and distribution of price quotations; Display of […]

MPEP Q & A 99: Types of Information Considered Status Information

Question: List two types of information that are considered status information. Answer: Status information of an application means only the following information: whether the application is pending, abandoned, or patented; whether the application has been published; the application number or the serial number plus any one of the filing date of the national application, the […]

MPEP Q & A 98: Fees Reduced by 75% for Micro Entities

Question: List at least 2 fees that are reduced by 75% for micro entities. Answer: The fees which are reduced by 75% for micro entities include filing fees (nonprovisional and provisional), search fees, examination fees, issue fees, and appeal fees for utility, design, plant, and reissue patent applications. Also included are patent maintenance fees including […]

MPEP Q & A 97: Nonstatutory Double Patenting Rejection Made Under Obviousness Analysis

Question: What must any nonstatutory double patenting rejection made under the obviousness analysis make clear? Answer: Any nonstatutory double patenting rejection made under the obviousness analysis should make clear: (A) The differences between the inventions defined by the conflicting claims — a claim in the patent compared to a claim in the application; and (B) The […]

MPEP Q & A 96: When a Nonpublication Request is Not Appropriate

Question: When is a nonpublication request not appropriate? Answer: A nonpublication request is not appropriate if applicants have already filed a counterpart foreign or international application in another country, or under a multilateral international agreement, that requires publication of applications at eighteen months after filing. Chapter Details: The answer to this question can be found in […]

MPEP Q & A 94: When a Concurrent Conflict of Interest Exists

Question: Except as provided in 37 C.F.R. 11.107 (b), a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. When does a concurrent conflict of interest exist? Answer: A concurrent conflict of interest exists if: The representation of one client will be directly adverse to another client; or There […]

MPEP Q & A 93: What is Essential Material

Question: What is essential material? Answer: “Essential material” is defined as that which is necessary to: provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it […]

MPEP Q & A 92: Statutory Requirements to be Met Before Certificate of Correction for an Applicant’s Mistake to Issue

Question: What are the two statutory requirements that must be met before a Certificate of Correction for an applicant’s mistake to issue? Answer: Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s mistake may issue. The first statutory requirement concerns the nature, i.e., type, of the mistake for which […]

MPEP Q & A 91: Non-Limiting Examples of Types of Characteristics Considered by the Courts to Determine Marked Difference

Question: List three non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference. Answer: Non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference include: Biological or pharmacological functions or activities; Chemical and physical properties; Phenotype, including […]

MPEP Q & A 90: Conditions an Examiner Should Check for Before Requiring Applicant to Add Claim to Provoke Interference

Question: What 5 conditions should an examiner check for before requiring an applicant to add a claim to provoke an interference? Answer: The 5 conditions an examiner should check for before requiring an applicant to add a claim to provoke an interference include:  that the application is otherwise completed  that the required claim does not […]

MPEP Q & A 88: What the Patent Prosecution Highway Attempts to Accomplish

Question: What does the Patent Prosecution Highway or PPH attempt to accomplish? Answer: The Patent Prosecution Highway, or PPH enables an applicant who receives a positive ruling on patent claims from one participating office to request accelerated prosecution of corresponding claims in another participating office, which allows the applicant to obtain a patentability decision in the […]

MPEP Q & A 86: Assignment of Patent to Change Address for Maintenance Fee Purposes

Question: If a patent is assigned, will that change the “correspondence address” or “fee address”  used for maintenance fee purposes? Answer: An assignment of a patent application or patent does not result in a change of the “correspondence address” or “fee address” for maintenance fee purposes. Chapter Details: The answer to this question can be […]

MPEP Q & A 82: Components International Design Applications Designating the U.S. Must Include

Question: What 3 components (in addition to the mandatory requirements) must an international design application designating the U.S. include? Answer: In addition to the mandatory requirements otherwise required for international design applications, an international design application designating the United States must also include: a claim; indications concerning the identity of the creator (i.e., the inventor); […]

MPEP Q & A 81: Items Applicant’s Must Establish Under 35 USC 156

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 establish that: (1) the patent has not expired before an application under 35 U.S.C. 156(d) was filed (this may be an application for patent term extension under subsection (d)(1) or an application for interim extension […]

MPEP Q & A 80: Assignments Potentially Utilized as the Oath or Declaration

Question: Is it possible for an assignment in applications filed on or after September 16, 2012 to be utilized as the oath or declaration? Answer: Yes, for applications filed on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (“assignment-statement”), and if the assignment is made […]

MPEP Q & A 79: Factors When Determining Sufficient Evidence Concerning Enablement Requirement

Question: List two factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is ‘undue’. Answer: The factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does […]

MPEP Q & A 77: Conclusion of an Inter Partes Reexamination Proceeding

Question: List one of the ways an inter partes reexamination proceeding may be concluded. Answer: Inter partes reexamination proceedings may be concluded in one of three ways: The prosecution of the reexamination proceeding may be brought to an end, and the proceeding itself concluded, by a denial of reexamination, or vacating the reexamination proceeding, or […]

MPEP Q & A 74: Sources of Information Material to Patentability

Question: Where may information material to patentability come from? Answer: Sources of information may include: co-workers trade shows communications from or with competitors potential infringers third parties Chapter Details: The answer to this question can be found in chapter 2000 of the MPEP. This chapter covers Duty of Disclosure. The answer is from the 9th […]

MPEP Q & A 73: Contents of an International Application

Question: What must an international application contain? Answer: Any international application must contain the following elements: request, description, claim or claims, abstract and one or more drawings (where drawings are necessary for the understanding of the invention). Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter […]

MPEP Q & A 71: Bibliographic Data

Question: What does bibliographic data include? Answer: Bibliographic data includes: inventor information; correspondence information; application information; representative information; domestic benefit information; foreign priority information; and applicant information. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form and Content of Application. The answer is […]

MPEP Q & A 70: Three Separate and Distinct Requirements of the Specification

Question: What are the three separate and distinct requirements required of the specification by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph? Answer: 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph require that the specification include the following three separate and distinct requirements: A written description of the invention; The manner […]

MPEP Q & A 69: Submission of a Protest

Question: When may a protest be submitted? Answer: A protest must be submitted prior to the mailing of a Notice of Allowance and the application must be pending when the examiner receives the information. Chapter Details: The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protests. The […]

MPEP Q & A 67: First Step of the Recapture Rule

Question: What is the first step of the three-step process for the recapture rule? Answer: The first step of the three-step process for the recapture rule is: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; Chapter Details: The answer to this question […]

MPEP Q & A 64: Strongest Rationale for Combining References

Question: What is the strongest rationale for combining references? Answer: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their […]

MPEP Q & A 57: Government Organizations that Cannot Qualify as Nonprofit Organizations

Question: List two types of government organizations that cannot qualify as a nonprofit organization. Answer: Government organizations, whether domestic or foreign, cannot qualify as nonprofit organizations. These include: A government research facility or other government-owned corporation could not qualify. Although the Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under […]

MPEP Q & A 56: Four Conditions That Establish a Statutory Bar Under Pre-AIA 35 U.S.C. 102(d)

Question: Name the four conditions which, if all are present, establish a statutory bar under pre-AIA 35 U.S.C. 102(d). Answer: Pre-AIA 35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a statutory bar against the granting of a patent in this country: (A) The foreign application must be filed more than 12 […]

MPEP Q & A 54: Who Interferences May be Provoked By

Question: Who may provoke an interference? Answer: Interferences may be provoked by: an examiner an applicant Chapter Details: The answer to this question can be found in chapter 2300 of the MPEP. This chapter covers Interference Proceedings. The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question […]

MPEP Q & A 53: Details on AIA 35 U.S.C. 102(a)

Question: What does AIA 35 U.S.C. 102(a) state? Answer: Specifically, AIA 35 U.S.C. 102(a) states that: [a] person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the […]

MPEP Q & A 51: Correspondence Address in Applications Filed Before September 16, 2012

Question: Where must the correspondence address appear in applications filed before September 16, 2012? Answer: The correspondence address in applications filed before September 16, 2012 must appear either in an application data sheet or in a clearly identifiable manner elsewhere in any papers submitted with an application filing. Chapter Details: The answer to this question can […]

MPEP Q & A 49: Correspondence to a Different Address for a Supplemental Examination Proceeding

Question: How can a patent owner get the Office to send correspondence to a different address for the supplemental examination proceeding? Answer: If the patent owner desires the Office to send correspondence to a different address, then a new power of attorney must be filed in the patent for which supplemental examination is requested and […]

MPEP Q & A 46: Item of Information that Raises a Substantial New Question of Patentability

Question: When does an item of information raise a substantial new question of patentability or SNQ? Answer: An item of information raises an SNQ where there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether or not the claim is patentable unless the same question was […]

MPEP Q & A 40: Situations Where There May be a Remand For Examiner Action Not For Further Consideration of a Rejection

Question: Name two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection. Answer: The following are two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a […]

MPEP Q & A 39: Types of Applications That Will Not be Published

Question: List 2 types of applications that will not be published. Answer: The Office will not publish the following applications: Provisional applications; Design applications; International design applications; and Reissue applications (because reissue applications are not kept confidential). Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter […]

MPEP Q & A 38: Common Types of Linking Claims

Question: What are the most common types of linking claims? Answer: The most common types of linking claims which, if allowable, act to prevent restriction between inventions that can otherwise be shown to be divisible, are (A) genus claims linking species claims; and (B) subcombination claims linking plural combinations. Chapter Details: The answer to this […]

MPEP Q & A 37: Non-Structural Generic Placeholders Invoking 35 USC 112(f)

Question: List 2 non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6. Answer: The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member […]

MPEP Q & A 36: Documents a Person Acting in a Representative Capacity May Not Sign

Question: List two documents a person acting in a representative capacity may not sign. Answer: A person acting in a representative capacity may not sign: a power of attorney, a document granting access to an application, a change of correspondence address, a terminal disclaimer, or a request for an express abandonment without filing a continuing […]

MPEP Q & A 34: Item an Applicant May Submit as Objective Evidence That Common Ownership Existed

Question: Name one item that an applicant may submit, in addition to a statement regarding common ownership as objective evidence that common ownership existed? Answer: The applicant may submit the following evidence: (A) Reference to assignments recorded in the U.S. Patent and Trademark Office which convey the entire rights in the application and the commonly […]

MPEP Q & A 33: What is a Divisional Application?

Question: What is a divisional application? Answer: A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States […]

MPEP Q & A 32: Circumstance Where Joint Ownership Exists

Question: Name one circumstance where joint ownership exists. Answer: Joint ownership occurs when any of the following cases exist: Multiple partial assignees of the patent property; Multiple inventors who have not assigned their right, title and interest; or A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest. Chapter […]

MPEP Q & A 31: Applicant Action After Invention is Found Obvious

Question: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, what must the applicant do? Answer: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, the burden then shifts to the applicant to: show that […]

MPEP Q & A 30: Elements of an International Design Application

Question: List the 3 categories the elements of an international design application fall into. Answer: The elements of an international design application fall into the following three categories: mandatory contents which include items required in all international design applications. additional mandatory contents which include elements that are required by certain Contracting Parties and therefore are mandatory in […]

MPEP Q & A 29: Access to a Pending or Abandoned Application Filed On or After September 16, 2012

Question: Who has the authority to grant access to a pending or abandoned application filed on or after September 16, 2012 that is in confidence? Answer: For applications filed on or after September 16, 2012, the following individuals may provide a written authority for access to a pending or abandoned application kept in confidence: the applicant […]

MPEP Q & A 26: Information Submitted When Paying Maintenance Fee

Question: List two pieces of information regarding the patent that should be submitted when paying the maintenance fee. Answer: The information regarding the patent that should be submitted with the maintenance fee includes: the fee year the amount of the maintenance fee and any surcharge being submitted any assigned customer number whether small entity status […]

MPEP Q & A 24: Petitions Under 37 CFR 1.137

Question: What must a petition under 37 CFR 1.137 be accompanied by? Answer: Specifically, 37 CFR 1.137(b) provides that a grantable petition pursuant to 37 CFR 1.137 must be accompanied by: The reply required to the outstanding Office action or notice; unless previously filed; the petition fee; and a statement that the entire delay in […]

MPEP Q & A 23: Response to a Notice of Noncompliant Supplemental Examination Request

Question: How can a patent owner file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request? Answer: The patent owner has one opportunity to file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request. If the corrected request is compliant with filing date requirements, the Office will […]

MPEP Q & A 22: Required Elements of a Request for Ex Parte Reexamination

Question: List one of the required elements of a request for ex parte reexamination. Answer: The required elements of a request for ex parte reexamination are as follows: “A statement pointing out each substantial new question of patentability based on prior patents and printed publications.” “An identification of every claim for which reexamination is requested, […]

MPEP Q & A 18: Duty to Disclose

Question: Who has a duty to disclose? Answer: The following individuals have a duty to disclose: each inventor each registered practitioner each assignee every other person who is substantially involved in the preparation or prosecution of the application the duty does not extend to typists, clerks, and similar personnel the duty does not extend to […]

MPEP Q & A 17: Plants That are Not Patentable

Question: Name two types of plants that are not patentable. Answer: All plants are patentable except: bacteria those that are tuber propagated plants that are not invented or discovered in a cultivated state and asexually reproduced plants that are not obvious Chapter Details: The answer to this question can be found in chapter 1600 of […]

MPEP Q & A 15: Procedural Step for International Applications Going Through the International Searching Authority

Question: List one procedural step that all international applications go through in the International Searching Authority. Answer: The main procedural steps that any international application goes through in the International Searching Authority are: the making of the international search, the preparing of the international search report and for international applications having an international filing date […]

MPEP Q & A 14: Request for Simultaneous Issue

Question: What must a request for simultaneous issue contain? Answer: The request must contain the following information about each allowed application for which simultaneous issue is requested; application number, filing date, name(s) of inventor(s), title of invention, and date of allowance. Chapter Details: The answer to this question can be found in chapter 1300 of […]

MPEP Q & A 11: Items Required in an Appeal Brief

Question: List two items which are required in an appeal brief. Answer: The specific items required in an appeal brief are: (i) Real party in interest. (ii) Related appeals, interferences, and trials. (iii) Summary of claimed subject matter. (iv) Argument. (v) Claims appendix. Chapter Details: The answer to this question can be found in chapter […]

MPEP Q & A 10: Contesting an Objection

Question: What is one way an applicant may contest an objection? Answer: An applicant may contest an objection by: asking the examiner to reconsider it. filing a petition to the Commissioner. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers the examination of applications. The […]

MPEP Q & A 9: Two Types of Double Patenting Rejections

Question: What are the two types of double patenting rejections? Answer: There are generally two types of double patenting rejections. One is the “same invention” type double patenting rejection based on 35 U.S.C. 101 which states in the singular that an inventor “may obtain a patent.” The second is the “nonstatutory-type” double patenting rejection based […]

MPEP Q & A 8: Filings Third-Party Submissions May Not Be Directed To

Question: List at least one type of filing that third-party submissions may not be directed to. Answer: Third-party submissions may not be directed to: provisional applications, issued patents, reissue applications, and reexamination proceedings. Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers the Statutory Invention […]

MPEP Q & A 7: Type of Descriptions of the Interest Conveyed or the Transaction to Be Recorded

Question: List two examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified. Answer: Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are: assignment; security agreement; merger; change of name; license; foreclosure; lien; contract; and […]

MPEP Q & A 6: Applicant Initiated Interview Request Forms

Question: What should an Applicant Initiated Interview Request Form include? Answer: An Applicant Initiated Interview Request Form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. Chapter Details: The […]

MPEP Q & A 3: Significant Differences Between Nonprovisional and Provisional Applications

Question: List two significant differences between nonprovisional applications and provisional applications. Answer: The following list includes significant differences between nonprovisional applications and provisional applications: No claim is required in a provisional application. No oath or declaration is required in a provisional application. Provisional applications will not be examined for patentability. A provisional application is not […]

MPEP Q & A 2: Correspondence That May Not be Transmitted by Facsimile

Question: Name two types of correspondence that may not be transmitted by facsimile. Answer: Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: A document that is required by statute to be certified A national patent application specification and drawing (provisional or nonprovisional) or […]

MPEP Q & A 1: Major Types of Patent Status

Question: What are the 3 major types of patent status? Answer: The 3 major types of patent status include: pending applications, abandoned applications, and issued patents. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing. The question and […]