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 other 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 235: What is a mathematical relationship?

Question: What is a mathematical relationship? Answer: A mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words or using mathematical symbols. For example, pressure (p) can be described as the ratio between the magnitude of the normal force (F) and area of the surface on contact (A), […]

MPEP Q & A 234: How can patent applications be sent to the USPTO?

Question: How can patent applications be sent to the U.S. Patent and Trademark Office? Answer: All applications (provisional and nonprovisional) may be sent to the U.S. Patent and Trademark Office by mail using the United States Postal Service, or they may be hand-carried to the Customer Service Window in Alexandria, Virginia. Chapter Details: The answer […]

MPEP Q & A 233: List application filing dates for determining whether patent is subject to maintenance fees

Question: What are the application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees? Answer: Application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees are as follows: (A) For an application not claiming benefit of an earlier application, the actual […]

MPEP Q & A 232: Can social media websites be a source of prior art?

Question: Can social media websites like Facebook be a source of prior art? Answer: Social media websites on the Internet, such as YouTube, Twitter, Facebook, and public forum posts, can be a source of prior art, provided the public accessibility requirements are met. Not all information on social media is considered publicly accessible. Public accessibility […]

MPEP Q & A 231: Types of papers that may be filed and processed electronically

Question: What are the types of papers that may be filed and processed electronically? Answer: Registered users may use EFS-Web to submit web-based documents such as ePetitions, Requests for Withdrawal as Attorney or Agent of Record, and eTerminal Disclaimers. EFS-Web permits registered users to file the following auto-processed ePetitions, requests, and eTerminal Disclaimers: Request for […]

MPEP Q & A 230: What is an ‘improper Markush grouping’?

Question: When does a Markush claim contain an ‘improper Markush grouping’? Answer: A Markush claim contains an “improper Markush grouping” if either: (1) the members of the Markush group do not share a “single structural similarity” or (2) the members do not share a common use. Chapter Details: The answer to this question can be […]

MPEP Q & A 229: When are the claims of a new application finally rejected in the first Office action?

Question: When may the claims of a new application be finally rejected in the first Office action? Answer: The claims of a new application may be finally rejected in the first Office action in those situations where: (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) […]

MPEP Q & A 228: Who is listed on the assignee section of a patent?

Question: Who will be listed in the assignee section of a patent? Answer: The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or for any patent that is granted. Any desired change to the designated applicant must be made […]

MPEP Q & A 227: What are the requirements for request for a corrected publication?

Question: If the Office made a material mistake in a patent application publication that is apparent from the Office records and applicant wishes to correct the material mistake, applicant may file a request for corrected publication. What are the requirements for request for a corrected publication? Answer: If the Office made a material mistake in […]

MPEP Q & A 226: When is a rejection on the ground of lack of utility appropriate?

Question: When is a rejection on the ground of lack of utility appropriate? Answer: A rejection on the ground of lack of utility is appropriate when: it is not apparent why the invention is “useful” because applicant has failed to identify any specific and substantial utility and there is no well-established utility, or an assertion […]

MPEP Q & A 225: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification.

Question: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification? Answer: Reasons, why the prior art element should not be considered an equivalent to the invention disclosed in the specification, may include: teachings in the specification that the particular prior art is […]

MPEP Q & A 224: What are the “Appropriate circumstances” to vacate the order granting reexamination?

Question: What are the “Appropriate circumstances” to vacate the order granting reexamination? Answer: “Appropriate circumstances” exist to vacate the order granting reexamination where, for example: (A) the reexamination order is facially not based on prior art patents or printed publications; (B) reexamination is prohibited under 37 CFR 1.907; (C) all claims of the patent were […]

MPEP Q & A 223: What Size Non-Patent Documents Require Document Size Fees?

Question: Document size fees are only applicable to non-patent documents having greater than what number of pages? Answer: The document size fees are only applicable to non-patent documents having greater than 20 pages. Non-patent documents having 20 pages or less are not subject to the document size fees. Chapter Details: The answer to this question […]

MPEP Q & A 222: What are the Three Conditions That Must be Satisfied …?

Question: AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or subject to an obligation of assignment to the same person in applying common ownership […]

MPEP Q & A 221: What are the Three Types of Patent Documents Available as Prior Art …?

Question: AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor. What are they? Answer: AIA 35 U.S.C. 102(a)(2) sets forth three types of […]

MPEP Q & A 220: What are the Section 42.208 paragraph (c) Amendments?

Question: What was Section 42.208 paragraph (c) amended to in the supplement entitled: Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board? Answer: Section 42.208 is amended by revising paragraph (c) to read as follows: * * * * * (c) Sufficient grounds. Post-grant review shall not be instituted […]

MPEP Q & A 219: When may the OPAP object to and require corrected drawings within a set time period?

Question: When may the OPAP object to and require corrected drawings within a set time period? Answer: The OPAP may object to and require corrected drawings within a set time period, if the drawings: have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough […]

MPEP Q & A 218: What is the issue of correlation about as related to matters of invitro/in vivo?

Question: What is the issue of correlation as related to matters of invitro/in vivo? Answer: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability. The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or […]

MPEP Q & A 217: What are the Section 42.23 paragraph (b) Amendments?

Question: What was Section 42.23 paragraph (b) amended to in the supplement entitled: Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board? Answer: Section 42.23 is amended by revising paragraph (b) to read as follows: 42.23 Oppositions and replies. * * * * * (b) All arguments for the […]

MPEP Q & A 216: Time for Establishing ISR and WO of the International Search Authority

Question: What is the time limit for establishing the International Search Report and the Written Opinion of the International Searching Authority? Answer: Publication of the international application occurs at 18 months from the earliest priority date or, where there is no priority date, 18 months from the international filing date. The international search report is […]

MPEP Q & A 215: When Did Amendments to the Rules of Practice for Trials Before PTAB Take Effect?

Question: When did the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’ take effect? Answer: This rule is effective May 2, 2016, and applies to all AIA petitions filed on or after the effective date and to any ongoing AIA preliminary proceeding or trial before the […]

MPEP Q & A 214: What are Sufficient Grounds for Post-Grant Review?

Question: According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’, what are sufficient grounds for a post-grant review? Answer: 37 CFR 42.208 (C) states that Post-grant review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting […]

MPEP Q & A 213: Can Attorney Arguments Take the Place of Evidence?

Question: Can attorney arguments take the place of evidence? Answer: No, the arguments of counsel cannot take the place of evidence in the record. Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, […]

MPEP Q & A 212: What is the Number of Days Before an Oral Argument for Exchange of Exhibits?

Question: According to the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’, what is the number of days before an oral argument for the exchange of exhibits? Answer: The number of days before an oral argument for the exchange of exhibits is at least 7 days. […]

MPEP Q & A 211: When May an Abandoned Application be Used as Prior Art?

Question: When may an abandoned application be used as prior art? Answer: An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent [application] is reference[d] in the disclosure of another patent, in a publication, or by voluntary disclosure under former Defensive […]

MPEP Q & A 210: What is the Executive Summary of the Supplement ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board?

Question: What is the executive summary of the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’? Answer: This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for IPR, PGR, CBM, and […]

MPEP Q & A 209: Submission of an Oath or Declaration From a Prior Application

Question: Does a copy of an oath or declaration from a prior application need to be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012 even if the oath or declaration identifies the application number of the prior application? Answer: Yes, a copy of an […]

MPEP Q & A 208: Filing a Petition to Make an Application Special Without a Fee

Question: Is it possible to file a petition to make an application special without a fee? Answer: A petition to make an application special may be filed without a fee if the basis for the petition is: (1) The applicant’s age or health; or (2) That the invention will materially: (i) Enhance the quality of […]

MPEP Q & A 207: When Can a Practitioner Enter a Business Transaction with a Client

Question: When can a practitioner enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client? Answer: A practitioner shall not enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a […]

MPEP Q & A 206: Requirements for an Applicant to Rescind Nonpublication Requests

Question: What are the requirements for an applicant to rescind a nonpublication request? Answer: The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublication request must: Identify the application to which it is directed; State in a conspicuous manner that the request that the application is not to be […]

MPEP Q & A 205: Meaning of Claims Limited to Species

Question: What is the meaning of claims limited to species? Answer: Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a claim may encompass two or more of […]

MPEP Q & A 204: Definition of a National Application

Question: What is the definition of a national application as described in chapter 200 of the MPEP? Answer: A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the […]

MPEP Q & A 203: Rejections of Dependent Claims Not Specifying a Further Limitation

Question: Should a dependent claim that does not specify a further limitation of the subject matter claimed be rejected under 35 USC 112(d)? Answer: Yes, a dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d). When two claims in an application comply with […]

MPEP Q & A 202: Components of Examiner’s Answer in an Appeal

Question: What should an examiner’s answer in an appeal include? Answer: An examiner’s answer should include, under appropriate headings, in the order indicated, the following items: (1) Grounds of Rejection to be Reviewed on Appeal. A statement that every ground of rejection set forth in the Office action from which the appeal is taken (as […]

MPEP Q & A 201: Drawings Essential Elements of Design Patent Applications

Question: Is a drawing an essential element of a design patent application? Answer: Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and […]

MPEP Q & A 200: When Drawings Are Not Considered Necessary Under 35 USC 113

Question: When is a drawing usually not considered necessary for the understanding of an invention under 35 USC 113 (first sentence)? Answer: It has been USPTO practice to treat an application that contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the […]

MPEP Q & A 199: The Difference Between Applicant Information, Correspondence Information, and Application Information

Question: What is the difference between applicant information, correspondence information, and application information? Answer: Applicant information includes the name, residence, mailing address, and citizenship of each applicant ( when dealing with pre-AIA 37 CFR 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with […]

MPEP Q & A 198: Items Necessary to Accord the International Filing Date the Date of Receipt of the International Application

Question: What does the Office need at the time of receipt in order to accord the international filing date the date of receipt of the international application? Answer: The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that the Office has found that, at the […]

MPEP Q & A 197: What Must a Petition for an Unintentionally Delayed Claim be Filed With?

Question: What must a petition for an unintentionally delayed claim be filed with? Answer: A petition for an unintentionally delayed claim must be accompanied by: (A) the reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a […]

MPEP Q & A 196: Submission of Petition to Withdraw Application from Issue Under 37 CFR 1.313(c)

Question: How can petitions to withdraw an application from issue under 37 CFR 1.313(c) be sent to the USPTO? Answer: Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be: (A) mailed to “Mail Stop Petition, Commissioner for Patents”; (B) transmitted by facsimile; (C) hand-carried to the Office of Petitions; or (D) […]

MPEP Q & A 195: Necessary Items for a Petition for Retroactive License

Question: What should a petition for retroactive license include? Answer: A petition for retroactive license shall include: (1) A listing of each of the foreign countries in which the unlicensed patent application material was filed, (2) The dates on which the material was filed in each country, (3) A verified statement (oath or declaration) containing: […]

MPEP Q & A 194: Stop the Publication of an Application

Question: Can a petition under 37 CFR 1.138(c) stop publication of an application? Answer: A petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication. The petition will be granted when it is recognized in […]

MPEP Q & A 193: Petition to Make Special and Energy Resources

Question: Does the petition to make special apply to patent applications for inventions dealing with energy resources? Answer: The U.S. Patent and Trademark Office will, on petition, accord “special” status to all patent applications for inventions which materially contribute to: (A) the discovery or development of energy resources, or (B) the more efficient utilization and […]

MPEP Q & A 192: Overcome Provisional Obviousness Rejection

Question: How can a provisional obviousness rejection be overcome? Answer: A provisional obviousness rejection can be overcome by: Arguing patentability over the earlier filed application; Combining the subject matter of the copending applications into a single application claiming benefit under 35 U.S.C. 120 of the prior applications and abandoning the copending applications Filing an affidavit […]

MPEP Q & A 191: Final Rule in the Changes to the Claim Construction Standard

Question: What does the final rule in the “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” state? Answer: In this final rule, the Office revises the rules to provide that a patent claim, or a claim proposed in a motion to amend, shall be […]

MPEP Q & A 190: AIA Proceeding Expenses Under Phillips

Question: Have parties to AIA proceedings under Phillips required expanded page limits or otherwise incurred more expenses in their AIA trials than parties in AIA proceedings under BRI? Answer: PTAB has not found that parties to these AIA proceedings under Phillips require expanded page limits or otherwise incur more expense in their AIA trials than […]

MPEP Q & A 189: Issuance of NIRC Action in Inter Partes Reexamination Proceeding

Question: Name one instance when issuance of a NIRC action would be proper in an inter partes reexamination proceeding. Answer: The following are the only instances when issuance of a NIRC action would be proper in an inter partes reexamination proceeding: There is no timely response by the patent owner to an Office action requiring […]

MPEP Q & A 188: What Should Applicant Initiated Interview Request Form Identify?

Question: What should the Applicant Initiated Interview Request form identify? Answer: The 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 187: Two Final Rules Dealing with Claim Construction Standard

Question: What are the two final rules dealing with the claim construction standard as implemented in the supplement entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”? Answer: In the first final rule, the Office changed the existing rules to, among other things: Increase […]

MPEP Q & A 186: Name Types of Patents that May Not Use 37 C.F.R. 1.114

Question: Name two types of patents that may not use the provisions of 37 C.F.R. 1.114. Answer: The provisions of 37 C.F.R. 1.114 do not apply to the following types of patents: design patent applications provisional applications applications filed before June 8, 1995 international applications filed before June 8, 1995 an international design application reexamination […]

MPEP Q & A 185: What Must an Application Filed Under 37 CFR 1.53(d) be Filed Before the Earliest Of?

Question: What must an application filed under 37 CFR 1.53(d) be filed before the earliest of? Answer: An application filed under 37 CFR 1.53(d) must be filed before the earliest of: (A) payment of the issue fee on the prior application, unless a petition is granted in the prior application; (B) abandonment of the prior […]

MPEP Q & A 184: What Should a Subject Matter Eligibility Rejection Identify Under Step 2A?

Question: A subject matter eligibility rejection under Step 2 should provide an explanation for each part of the Step 2 analysis; Step 2A and Step 2B. What specifically should a rejection identify under Step 2A? Answer: For Step 2A, the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in […]

MPEP Q & A 183: When Changes to the Claim Construction Standard Apply

Question: When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” apply? Answer: As shown in the supplement … The changes to the claim construction standard will apply to proceedings where a petition is filed […]

MPEP Q & A 182: Characteristics of Ex Parte Reexamination

Question: List one of the basic characteristics of ex parte reexamination. Answer: The basic characteristics of ex parte reexamination are as follows: Anyone can request reexamination at any time during the period of enforceability of the patent; In ex parte reexaminations, prior art considered during reexamination is limited to prior art patents or printed publications […]

MPEP Q & A 181: Summary of Claim Construction Standard

Question: What is the executive summary of the final rule when dealing with the claim construction standard that took effect on November 13, 2018? Answer: This final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-Smith America Invents Act (‘‘AIA’’) providing for trials before the Office, by replacing […]

MPEP Q & A 180: AIA 35 U.S.C. 102(b)

Question: What does AIA 35 U.S.C. 102(b) discuss? Answer: AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a). Chapter Details: The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability. The answer is from the 9th Edition, Revision 08.2017. Depending […]

MPEP Q & A 179: What is the 3-Step Test for Recapture?

Question: What is the 3-step test for recapture? Answer: The three-step test for recapture is: First, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; Next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; […]

MPEP Q & A 178: What is the Difference Between Derivation and Priority of Invention?

Question: What is the difference between derivation and priority of invention? Answer: Derivation and priority of invention both focus on inventorship.  Derivation addresses originality, i.e., who invented the subject matter, whereas priority focuses on which party invented the subject matter first. Chapter Details: The answer to this question can be found in chapter 2100 of […]

MPEP Q & A 177: Revealing Information Relating to the Representation of a Client When the Client has Not Given Informed Consent

Question: Can a patent practitioner ever reveal information relating to the representation of a client when the client has not given informed consent? Answer: Yes, a practitioner may reveal information relating to the representation of a client to the extent the practitioner reasonably believes necessary: (1) To prevent reasonably certain death or substantial bodily harm; […]

MPEP Q & A 176: What Does a Petition Under 37 C.F.R. 1.78 Require?

Question: What does a petition under 37 C.F.R. 1.78 require? Answer: A petition under 37 CFR 1.78(b) requires: the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); the petition fee; and a […]

MPEP Q & A 175: Concepts Related to Tracking or Organizing Information

Question: List a concept related to tracking or organizing information. Answer: Examples of concepts related to tracking or organizing information include; i. classifying and storing digital images in an organized manner ii. collecting information, analyzing it, and displaying certain results of the collection and analysis iii. encoding and decoding image data – RecogniCorp, LLC v. Nintendo […]

MPEP Q & A 174: Submission Types that May Not be Filed Via EFS Web.

Question: List 2 submission types that may not be filed via EFS Web. Answer: The following is a list of submission types that are not permitted to be filed using EFS-Web: Plant patent applications and follow-on documents associated with plant patent applications, other than third party preissuance submissions. Requests for Reexamination for plant patents and […]

MPEP Q & A 173: What is a Complete Nonprovisional Application Comprised of?

Question: What is a complete nonprovisional application comprised of? Answer: A complete nonprovisional application comprises the following: a specification, including claims, drawings, an oath or declaration, the prescribed filing fee, search fee, examination fee and application size fee Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This […]

MPEP Q & A 172: Fees that Must be Paid Upon Filing a Request for Prioritized Examination

Question: Name two fees that must be paid upon filing a request for prioritized examination. Answer: Upon filing the request for prioritized examination, the following fees must be paid for the application: (1) the prioritized examination fee set forth in 37 CFR 1.17(c), (2) the processing fee set forth in 37 CFR 1.17(i)(1), (3) the […]

MPEP Q & A 171: Instances Where Publication or Issue Date is Later Than the Current Date

Question: When the publication or issue date is later than the current date (i.e., the date of the request), who will that information be given to? Answer: When the publication or issue date is later than the current date (i.e., the date of the request), such information may be given only to the applicant, an […]

MPEP Q & A 170: Must a Claim be Identified to a Correct Category of Subject Matter?

Question: Must a claim be identified to a correct category of subject matter? Answer: It is not necessary to identify a single category into which a claim falls, so long as it is clear that the claim falls into at least one category. It is also not necessary to identify a “correct” category into which […]

MPEP Q & A 169: Non-Limiting Claims Not Directed to Any of the Statutory Categories.

Question: Provide an example of a non-limiting claim that is not directed to any of the statutory categories. Answer: Examples of a non-limiting claim that is not directed to any of the statutory categories include; Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) […]

MPEP Q & A 168: Competent Representation to a Client

Question: A practitioner shall provide competent representation to a client. What does competent representation to a client entail? Answer: Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation. Chapter Details: The answer to this question can be found in the following supplement: Changes to Representation of […]

MPEP Q & A 167: When Must Applicants Timely File a Notice of Foreign Filing to Avoid Abandonment of a U.S. Application?

Question: Name one circumstance where applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application. Answer: Applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application if: applicant filed a nonpublication request in the U.S. application filed under 35 U.S.C. 111(a); applicant subsequently […]

MPEP Q & A 166: Further Written Opinion Established by the International Preliminary Examining Authority

Question: Name one item any further written opinion established by the International Preliminary Examining Authority should set forth. Answer: Any further written opinion established by the International Preliminary Examining Authority should set forth, as applicable: (A) Any defects in the international application concerning subject matter which is not required to be examined or which is […]

MPEP Q & A 165: When Patent Owner Fails to File Timely Response to Any Office Action Prior to an Action Closing Prosecution (ACP)

Question: List one consequence for when the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP). Answer: If the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP), it will result in the following consequences: […]

MPEP Q & A 164: Computer-Implemented Methods and the Tax Strategy Provision

Question: Would a computer-implemented method that is deemed novel and non-obvious be effected by the tax strategy provision even if used for a tax purpose? Answer: A computer-implemented method that is deemed novel and non-obvious would not be affected by this provision even if used for a tax purpose. For example, a novel and non-obvious […]

MPEP Q & A 163: What are the Most Common Basis for Filing a Reissue Application?

Question: What are the most common basis for filing a reissue application? Answer: The most common bases for filing a reissue application are: the claims are too narrow or too broad; the disclosure contains inaccuracies; applicant failed to or incorrectly claimed foreign priority; and applicant failed to make reference to or incorrectly made reference to […]

MPEP Q & A 162: When is a 35 U.S.C. 102 Rejection with Multiple References Proper?

Question: When is a 35 U.S.C. 102 rejection with multiple references proper? Answer: A 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to: Prove the primary reference contains an “enabled disclosure;” Explain the meaning of a term used in the primary reference; or Show […]

MPEP Q & A 161: Living Subject Matter and Patent Protection

Question: Is it true that living subject matter with markedly different characteristics from any found in nature, such as the claimed bacterium produced by genetic engineering, are excluded from patent protection by 35 U.S.C. 101? Answer: No, it is not true. For example, the Federal Circuit has indicated that “discoveries that possess ‘markedly different characteristics from […]

MPEP Q & A 160: Rules for Appellant to Request to Reopen Prosecution

Question: Can an Appellant request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection? Answer: No, an appellant cannot request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection. Chapter Details: […]

MPEP Q & A 159: What are the Two Criteria for Subject Matter Eligibility?

Question: What are the two criteria for subject matter eligibility? Answer: First, the claimed invention must be in one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. Second, the claimed invention also […]

MPEP Q & A 158: Can Maintenance Fees be Paid in Cash?

Question: Can maintenance fees be paid in cash? Answer: Maintenance fees may not be paid in cash. A maintenance fee may be paid: with Treasury notes with national bank notes with post office money orders with certified checks over the internet by electronic funds transfer (EFT), credit card, or deposit account payment methods Chapter Details: […]

MPEP Q & A 157: Ways a Patent May be Corrected or Amended

Question: Name two ways a patent may be corrected or amended. Answer: A patent may be corrected or amended in eight ways, namely by: reissue, the issuance of a certificate of correction which becomes a part of the patent, disclaimer, reexamination, supplemental examination, inter partes review, post grant review, and covered business method review Chapter Details: […]

MPEP Q & A 156: What is the Definition of Fundamental Economic Practices?

Question: What is the definition of fundamental economic practices? Answer: The courts have used the phrases “fundamental economic practices” or “fundamental economic concepts” to describe concepts relating to the economy and commerce, such as agreements between people in the form of contracts, legal obligations, and business relations. Chapter Details: The answer to this question can […]

MPEP Q & A 155: Statutes That Grounds for Post-Grant Review May be Raised For

Question: List two statutes that grounds for post-grant review may be raised for. Answer: Grounds for post-grant review include grounds that could be raised under 35 U.S.C. 102 or 103 including those based on prior art consisting of patents or printed publications. Other grounds available for post-grant review include 35 U.S.C. 101 and 112, with […]

MPEP Q & A 154: What Does the Broadest Reasonable Interpretation (BRI) Do?

Question: What does the broadest reasonable interpretation (BRI) do? Answer: The BRI sets the boundaries of the coverage sought by the claim and will influence whether the claim seeks to cover subject matter that is beyond the four statutory categories or encompasses subject matter that falls within the exceptions. Chapter Details: The answer to this […]

MPEP Q & A 153: When Will a Practitioner be Responsible for Another Practitioner’s Violation of the USPTO Rules of Professional Conduct?

Question: When will a practitioner be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct? Answer: A practitioner shall be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct if: The practitioner orders or, with knowledge of the specific conduct, ratifies the conduct involved; or The practitioner is a […]

MPEP Q & A 152: Information an Attorney of Record May Have to Submit in Reply to an Office Action, Reissue Application, or Reexamination Proceeding

Question: An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding. List 2 different types of information this may include. Answer: An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding; […]

MPEP Q & A 151: Situations Where a Practitioner May Withdraw From Representing a Client According to 37 C.F.R. 11.116

Question: List two situations where a practitioner may withdraw from representing a client according to 37 C.F.R. 11.116. Answer: A practitioner may withdraw from representing a client if: Withdrawal can be accomplished without material adverse effect on the interests of the client; The client persists in a course of action involving the practitioner’s services that […]

MPEP Q & A 150: Triggering of On-Sale Bar of Pre-AIA 35 U.S.C. 102(b)

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. 102(b) is triggered if the invention is both: The subject of a commercial offer for sale not primarily for experimental purposes and Ready for patenting. Chapter Details: The answer to this question can be found […]

MPEP Q & A 149: Four Categories of Invention Recited in 35 U.S.C. 101

Question: What are the 4 categories of invention recited in 35 U.S.C. 101? Answer: The four categories of invention recited in 35 U.S.C. 101 are: process, machine, manufacture, or composition of matter. Chapter Details: The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of applications. The […]

MPEP Q & A 148: The Duty of Disclosure in Reexamination Proceedings

Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual who is substantively involved on behalf of the patent owner. Chapter Details: The answer to […]

MPEP Q & A 147: Post-Grant Reviews and Civil Actions

Question: Can a post-grant review be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent? Answer: No, a post-grant review may not be instituted if, before the date on which the […]

MPEP Q & A 146: When Can a Combination as Claimed Show that Inventions are Distinct?

Question: When can a combination as claimed show that inventions are distinct? Answer: Inventions are distinct if it can be shown that a combination as claimed: (A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and (B) the subcombination can be shown to have utility either […]

MPEP Q & A 145: Methods For Paying a Maintenance Fee

Question: How can a maintenance fee be paid? Answer: A maintenance fee may be paid: with cash with Treasury notes with national bank notes with post office money orders with certified checks over the internet by electronic funds transfer (EFT), credit card, or deposit account payment methods Chapter Details: The answer to this question can […]

MPEP Q & A 144: What Should a Subject Matter Eligibility Rejection Under Step 2 Do?

Question: What should a subject matter eligibility rejection under Step 2 do? Answer: A subject matter eligibility rejection under Step 2 should: Identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception; Identify any additional elements (specifically point to […]

MPEP Q & A 143: Who Decides Petitions for Derivation and Conducts Any Ensuing Derivation Proceeding?

Question: Who decides petitions for derivation and conducts any ensuing derivation proceeding? Answer: The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensuing derivation proceeding. Chapter Details: The answer to this question can be found in the following supplement: Derivation Proceeding Final Rules. This is a special supplement that at the […]

MPEP Q & A 142: Examples of Evidence Under 37 C.F.R. 1.131(a)

Question: List 2 examples of evidence under 37 C.F.R. 1.131(a). Answer: The allegations of fact might be supported by submitting as evidence one or more of the following: (A) attached sketches; (B) attached blueprints; (C) attached photographs; (D) attached reproductions of notebook entries; (E) an accompanying model; (F) attached supporting statements by witnesses, where verbal […]

MPEP Q & A 141: Issues That Must be Completed During the Examination Before an Interference May be Called

Question: What are the three major issues that must be completed during the examination before an interference may be called? Answer: The three major issues that must be completed during the examination are: All pending claims must be allowed, finally rejected, or canceled All petitions must be decided All appeals from a final rejection must […]

MPEP Q & A 140: Status Identifiers Expected to Follow the Claim Number in an Amendment to the Claims

Question: List two status identifiers that are expected to follow the claim number in an amendment to the claims. Answer: Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), or (not entered). The status identifier (withdrawn – currently […]

MPEP Q & A 139: Fees the Office Might Refund

Question: What fees might the Office refund? Answer: The Office may refund: A fee paid by mistake (e.g., fee paid when no fee is required); or Any fee paid in excess of the amount of fee that is required. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. […]

MPEP Q & A 138: When May a Process and Apparatus for its Practice be Shown to be Distinct Inventions?

Question: When may a process and apparatus for its practice be shown to be distinct inventions? Answer: Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or […]

MPEP Q & A 137: Who May a Party Dissatisfied with a Final Decision in a Derivation Proceeding Appeal To?

Question: Who may a party dissatisfied with a final decision in a derivation proceeding appeal to? Answer: A party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit. Chapter Details: The answer to this question can be found in the following supplement: Derivation Proceeding Final Rules. […]

MPEP Q & A 136: What a Reasons Document Should Include

Question: The reasons document explains why each item of information does or does not raise a substantial new question of patentability (or SNQ) in a supplemental examination. What should a reasons document include? Answer: The reasons document explains why each item of information does or does not raise a SNQ. The reasons document should include: […]

MPEP Q & A 135: When May the Prior Art Date of a Reference Under Pre-AIA 35 U.S.C. 102(e) be the International Filing Date?

Question: When may the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) be the international filing date? Answer: The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated […]

MPEP Q & A 134: Who is Barred From Filing a Request for Ex Parte Reexamination of a Patent?

Question: Who is barred from filing a request for ex parte reexamination of a patent? Answer: “Any person” may file a request for ex parte reexamination of a patent, unless prohibited by AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). Accordingly, there are no types of “persons” who are excluded from being able to seek reexamination. Corporations […]

MPEP Q & A 133: Correspondence That May be Transmitted by Facsimile.

Question: Name two types of correspondence that may be transmitted by facsimile. Answer: Types of correspondence which may be transmitted by facsimile include: CPAs (available for design applications only), amendments, declarations, petitions, information disclosure statements (IDS), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examination (RCEs), assignment documents, issue fee transmittals and […]

MPEP Q & A 132: What are the Three Separate and Distinct Requirements of the First Paragraph of 35 U.S.C. 112?

Question: What are the three separate and distinct requirements of the first paragraph of 35 U.S.C. 112? 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 and process of making and using the […]

MPEP Q & A 131: What Does an Applicant Who Uses the Patent Cooperation Treaty Gain the Benefit of?

Question: What does an applicant who uses the Patent Cooperation Treaty gain the benefit of? Answer: An applicant who uses the Patent Cooperation Treaty gains the benefit of: (A) a delay in the time when papers must be submitted to the national offices; (B) an international search (to judge the level of the relevant prior […]

MPEP Q & A 130: What is a Covered Business Method Patent According to the AIA?

Question: What is a covered business method patent according to the AIA? Answer: The AIA specifies that a covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the […]

MPEP Q & A 129: How Applicants Can Rebut a Prima Facie Case of Obviousness Based on Overlapping Ranges?

Question: How can applicants rebut a prima facie case of obviousness based on overlapping ranges? Answer: Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. In addition, an applicant can rebut a presumption of obviousness based on a claimed invention that falls within […]

MPEP Q & A 128: Individuals Who May Sign the Power of Attorney for Applications Filed On or After September 16, 2012

Question: Who must sign the power of attorney for applications filed on or after September 16, 2012? Answer: For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings). An assignee who […]

MPEP Q & A 127: What Must a Statement Under 37 CFR 1.97(e) State?

Question: What must a statement under 37 CFR 1.97(e) state? Answer: A statement under 37 CFR 1.97(e) must state either: That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the […]

MPEP Q & A 126: Time When a Third Party Submission Must be Made

Question: When must a third party submission be made? Answer: A third-party submission must be filed prior to the earlier of: The date a notice of allowance is given or mailed in the application; or The later of: (i) Six months after the date on which the application is first published by the Office, or […]

MPEP Q & A 125: Reasons Why a Petition Filed Under 35 U.S.C. 321 May be Considered

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 U.S.C. 321 may be considered. List two reasons why a petition filed under 35 U.S.C. 321 may be considered. Answer: 35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered […]

MPEP Q & A 124: Situations Where the Examiner is Not Responsible for Examining the Sufficiency of the Showing

Question: In what two situations is the examiner not responsible for examining the sufficiency of the showing? Answer: The examiner is not responsible for examining the sufficiency of the showing except when: The application claim is subject to a rejection under 35 U.S.C. 102(a) or (e) and the applicant files an interference suggestion instead of […]

MPEP Q & A 123: What Situation May a Certificate of Correction be Used In Order to Correct an Issued Patent as Long as the Filing Was Made Without Deceptive Intent?

Question: A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in what situations? Answer: A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in the […]

MPEP Q & A 122: Advantages of Filing a CPA Compared to a Continuation or Divisional Application

Question: List an advantage of filing a CPA compared to a continuation or divisional application. Answer: The following list includes advantages of filing a CPA compared to a continuation or divisional application: The papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) […]

MPEP Q & A 121: Times When a Request for Continuing Examination May be Proper

Question: List 2 times when a request for continuing examination may be proper. Answer: A request for continued examination may be proper when: An Office action is a final rejection. A Notice of Allowance has issued. An Office action under Ex Parte Quayle (this is a legal proceeding, the details of which are not discussed […]

MPEP Q & A 120: What May an Applicant do in Response to a Rejection Based on Failure to Claim Patent-Eligible Subject Matter?

Question: What may an applicant do in response to a rejection based on failure to claim patent-eligible subject matter? Answer: In response to a rejection based on failure to claim patent-eligible subject matter, applicant may: Amend the claim, e.g., to add additional elements or modify existing elements so that the claim as a whole amounts […]

MPEP Q & A 119: When is a Reference Analogous Art to the Claimed Invention?

Question: When is a reference analogous art to the claimed invention? Answer: A reference is analogous art to the claimed invention if: The reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or The reference is reasonably pertinent to the problem faced by the inventor […]

MPEP Q & A 118: Item an Appellant Must File If He or She Wishes to Reinstate an Appeal After Prosecution is Reopened

Question: What must an appellant file if he or she wishes to reinstate an appeal after prosecution is reopened? Answer: If an appellant wishes to reinstate an appeal after prosecution is reopened, appellant must file a new notice of appeal and a complete new appeal brief. Chapter Details: The answer to this question can be […]

MPEP Q & A 117: Items a ‘Corrective Document’ Must Include?

Question: An error in a recorded assignment document will be corrected by the Assignment Division provided a “corrective document” is submitted. What items must the “corrective document” include? Answer: The “corrective document” must include the following items: A copy of the original assignment document with the corrections made therein. The corrections must be initialed and […]

MPEP Q & A 116: Consequence That May Result Where Patent Owner Fails to Make Timely Appeal After the Issuance of a Right of Appeal Notice

Question: What is one consequence that may result where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed? Answer: Where the patent owner fails to make a timely appeal after the issuance of a Right of […]

MPEP Q & A 115: What is the Order of Arrangement for the Specification?

Question: What is the order of arrangement for the specification? Answer: The following order of arrangement is preferable in framing the specification. (A) Title of the invention. (B) Cross-reference to related applications. (C) Statement regarding federally sponsored research or development. (D) The names of the parties to a joint research agreement (E) Reference to a […]

MPEP Q & A 114: Individuals Who May Grant Written Authority to Status Information

Question: Name 2 individuals who may grant written authority to status information in a non-published, pending or abandoned application. Answer: A non-published, pending or abandoned application containing written authority granting access to the requester allows the requester access to status information if it is signed by any of the following individuals: The applicant; A patent […]

MPEP Q & A 113: List 2 Requirements of the Summary of Abstract

Question: List 2 requirements of the summary of abstract. Answer: The summary of abstract should preferably be between 50 and 150 words. It should contain the following: (A) Indication of field of invention. (B) Clear indication of the technical problem. (C) Gist of invention’s solution of the problem. (D) Principal use or uses of the […]

MPEP Q & A 112: What Does 35 U.S.C. 102(a)(2) Provide?

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 a patent if the claimed invention was described in a patent issued under 35 U.S.C. 151, or in an application for patent published or deemed published under 35 U.S.C. 122(b), in which the patent or […]

MPEP Q & A 111: What Must Each Information Disclosure Statement Include a Legible Copy Of?

Question: In addition to the list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office, what else must each information disclosure statement include a legible copy of? Answer: In addition to the list of information, each information disclosure statement must also include a legible copy of: (A) Each foreign […]

MPEP Q & A 110: What a Petition Filed On or After September 16, 2012 Must be Accompanied By to Correct Inventorship in a Patent

Question: What must a petition filed on or after September 16, 2012 be accompanied by to correct the inventorship in a patent? Answer: A petition filed on or after September 16, 2012 to correct the inventorship in a patent must be accompanied by all of the following: (1) A statement from each person who is […]

MPEP Q & A 109: How Inter Partes Reexamination Differs From Ex Parte Reexamination

Question: List one way inter partes reexamination differs from ex parte reexamination. Answer: Inter partes reexamination differs from ex parte reexamination in matters of procedure, such as when the third party requester can participate, the types of Office actions and the timing of issuance of the Office actions, and the requirement for identification of the […]

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 105: Petition Fee Requirements For Participation in the PPH

Question: For participation in the Global/IP5 PPH pilot program at the USPTO, does the applicant need to submit a petition fee under 37 C.F.R. 1.17(h). Answer: No, for participation in the Global/IP5 PPH pilot program at the USPTO, the applicant must submit: A request for participation in the Global/IP5 PPH pilot program and a request […]

MPEP Q & A 104: What Submission of Article 19 Amendments Should Comprise

Question: Name one item the submission of Article 19 amendments should comprise. Answer: The submission of Article 19 amendments should comprise: (i) a complete set of claims in replacement of the claims originally filed (ii) a letter which must indicate the differences between the claims as filed and those as amended plus the basis for […]

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 102: Earlier Concluded Examination or Review of Patent

Question: What is an earlier concluded examination or review of the patent? Answer: An earlier concluded examination or review of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; (C) […]

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 95: What an Examiner May Do After Considering the Issues on Appeal

Question: What may an examiner do after he or she has considered the issues on appeal? Answer: After an appeal brief has been filed and the examiner has considered the issues on appeal, the examiner may: reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner ; allow the […]

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 89: Concepts the Courts Have Found to be Laws of Nature and Natural Phenomena

Question: List 3 examples of concepts courts have found to be laws of nature and natural phenomena. Answer: The types of concepts courts have found to be laws of nature and natural phenomena are shown by these cases, which are intended to be illustrative and not limiting: An isolated DNA; a correlation that is the […]

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 87: Reasons Practitioner Should Act as an Advocate Before a Tribunal

Question: List one reason a practitioner should act as an advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness. Answer: A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless: 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 85: Board on Deferring Action on a Petition for a Derivation Proceeding

Question: Can the Board defer action on a petition for a derivation proceeding? Answer: The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is […]

MPEP Q & A 84: Division of Fees Between Practitioners Not in the Same Firm

Question: Can a division of a fee between practitioners who are not in the same firm may be made? Answer: A division of a fee between practitioners who are not in the same firm may be made only if: The division is in proportion to the services performed by each practitioner or each practitioner assumes […]

MPEP Q & A 83: Filing a Petition to Institute a Post-Grant Review

Question: Who may file a petition to institute a post-grant review? Answer: A person who is not the patent owner may file a petition to institute a post-grant review, unless the petitioner or real party-in-interest had already filed a civil action challenging the validity of a claim of the patent. A petition may not 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 78: AIA and Applications Filed Before March 16, 2013

Question: Do the changes to 35 U.S.C. 102 and 103 in the AIA apply to applications filed before March 16, 2013? Answer: No, the changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013. Chapter Details: The answer to this question can be found […]

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 76: Filing a Petition for a Covered Business Method Patent Review

Question: Who may file a petition for a covered business method patent review? Answer: A petitioner may not file a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has […]

MPEP Q & A 75: Duty of Disclosure in Reexamination Proceedings

Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual who is substantively involved on behalf of the patent owner. Chapter Details: The answer to […]

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 72: Filing of a Certificate of Correction

Question: When should a Certificate of Correction be filed instead of a reissue? Answer: While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be effected by filing a request for a Certificate of Correction if: (A) the only change being made in the patent is to correct the inventorship; […]

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 […]