Patent Bar MPEP Q & A Podcast
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Patent Bar MPEP Q & A Podcast
Patent Bar Review
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MPEP Q & A 338: Requirements for an English language translation of a non-English language foreign application.
Question: What are two of the requirements for an English language translation of a non-English language foreign application? Answer: If an English la...
MPEP Q & A 337: Kinds of information that can be relied on in a protest.
Question: List three examples of the kinds of information, in addition to prior art documents, that can be relied on in a protest. Answer: The followi...
MPEP Q & A 336: Circumstances when relevant documentation should be submitted to regulatory review body.
Question: When should relevant documentation submitted to a regulatory review body be submitted for the Office for review? Answer: Where relevant docu...
MPEP Q & A 335: Under what circumstances will international and search fees be refunded?
Question: Under what circumstances will the international and search fees be refunded? Answer: The international and search fees will be refunded if n...
MPEP Q & A 334: Assignee(s) who may conduct prosecution or reexamination.
Question: Which two types of assignee(s) may conduct either the prosecution of a national application for patent or a reexamination proceeding? Answer...
MPEP Q & A 333: When a supplemental reissue oath or declaration is required.
Question: If additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, is a supplemental reissue...
MPEP Q & A 332: Availability of provisional application relied on for priority and abandoned.
Question: Is a provisional application that is relied upon for priority in a U.S. patent and is abandoned available through the Patent Center? Answer:...
MPEP Q & A 331: Does new ground of rejection raised by the Board in an appeal reopen prosecution?
Question: Does the new ground of rejection raised by the Board in an appeal reopen prosecution? Answer: The new ground of rejection raised by the Boar...
MPEP Q & A 330: Items the Technology Center will verify when a Request for Continuing Examination is initially processed.
Question: Name two items the Technology Center will verify when a Request for Continuing Examination is initially processed. Answer: An RCE will be in...
MPEP Q & A 329: Non-exhaustive factors to determine whether to accept a petition after the 2-month period.
Question: What non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period? Answer: The following non-...
MPEP Q & A 328: Reasons for insisting upon a restriction?
Question: What are the reasons for insisting upon a restriction? Answer: Every requirement to restrict has two aspects: (A) the reasons (as distinguis...
MPEP Q & A 327: Information submitted for each patent on which a maintenance fee or surcharge is paid.
Question: What information should also be submitted for each patent on which a maintenance fee or surcharge is paid? Answer: The following information...
MPEP Q & A 326: Applications that count for “gross income” basis micro entity status.
Question: What applications count for the filing limits for the purposes of establishing micro entity status under the “gross income” basis? Answer: F...
MPEP Q & A 325: List the pieces of information that should be placed on the first page of a protest.
Question: List two pieces of information that should be placed on the first page of a protest. Answer: Each protest should be clearly identified as a...
MPEP Q & A 324: Name items that must be submitted when adding a “Sequence Listing” after the application filing date.
Question: Name at least two items that must be submitted when adding a “Sequence Listing” after the application filing date. Answer: Adding a “Sequenc...
MPEP Q & A 323: Can distinct subject matter be recovered by filing a reissue application in specific cases?
Question: Where a restriction (including an election of species) requirement was made in an application and applicant permitted the elected invention...
MPEP Q & A 322: What type of Demand will prevent an international application designating the U.S. to enter?
Question: What type of Demand will prevent an international application designating the U.S. to enter the national stage via the U.S. Designated Offic...
MPEP Q & A 321: What are the factual inquiries related to obviousness?
Question: What are the factual inquiries related to obviousness that the Court enunciates? Answer: Obviousness is a question of law based on underlyin...
MPEP Q & A 320: What are the three types of designs interpreted by case law to include?
Question: What are the three types of designs the language “new, original and ornamental design for an article of manufacture” has been interpreted by...
MPEP Q & A 319: What must any assignment-related document for patent matters submitted by facsimile include?
Question: What three items must any assignment-related document for patent matters submitted by facsimile include? Answer: Any assignment-related docu...
MPEP Q & A 318: Requirements of an oath or declaration under section 37 CFR 1.63.
Question: Name two requirements of an oath or declaration under section 37 CFR 1.63? Answer: An oath or declaration under section 37 CFR 1.63 must: (1...
MPEP Q & A 317: How can you determine whether the original patent requirement is satisfied in a reissue application?
Question: How can you determine whether the original patent requirement is satisfied in a reissue application? Answer: Examiners should review the rei...
MPEP Q & A 316: Is it ever necessary to change the inventorship named in the application?
Question: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, is it ever nece...
MPEP Q & A 315: List examples of situations that confirm a “real world” context of use.
Question: List two examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” co...
MPEP Q & A 314: What will the request indicate for each patent and printed publication cited in the request?
Question: When an examiner concludes that no substantial new question of patentability has been raised, they will prepare a decision denying the reexa...
MPEP Q & A 313: Reasons why the Office will withdraw the application from issue.
Question: Once the issue fee has been paid, list two reasons why the Office will withdraw the application from issue at its own initiative. Answer: On...
MPEP Q & A 312: List two General Plastic non-exclusive factors.
Question: List two General Plastic non-exclusive factors. Answer: The General Plastic non-exclusive factors include the following: Whether the same pe...
MPEP Q & A 311: Two requirements for a petition for suspension of action under 37 CFR 1.103(a)
Question: List two requirements for a petition for suspension of action under 37 CFR 1.103(a). Answer: A petition for suspension of action under 37 CF...
MPEP Q & A 310: List two examples of notices issued as part of the pre-examination processing of an application
Question: The three-month period in 37 CFR 1.704(b) applies to the Office notices and letters issued as part of the pre-examination processing of an a...
MPEP Q & A 309: List two requirements for adding a “Sequence Listing” after the application filing date?
Question: List two requirements for adding a “Sequence Listing” after the application filing date? Answer: Adding a “Sequence Listing” after the appli...
MPEP Q & A 308: What type of arguments should a patent owner preliminary response include?
Question: What type of arguments should a patent owner preliminary response include? Answer: A patent owner preliminary response may include one or mo...
MPEP Q & A 307: When are electronic means or medium for filing IDSs permitted?
Question: When are electronic means or medium for filing IDSs permitted? Answer: As shown in chapter 600 … Electronic means or medium for filing IDSs...
MPEP Q & A 306: Sealed confidential information prior to the institution of the trial by which options?
Question: Where a petitioner files a motion to seal with the petition that seeks entry of a protective order other than the default protective order,...
MPEP Q & A 305: What must the supplemental search fee be accompanied by in addition to the payment?
Question: What must the supplemental search fee be accompanied by in addition to the payment? Answer: As shown in chapter 1800 … The supplemental sear...
MPEP Q & A 304: What does routine discovery include?
Question: What does routine discovery include? Answer: Routine discovery includes: Production of any exhibit cited in a paper or testimony; The cross-...
MPEP Q & A 303: What should a certificate of correction filed via the patent electronic filing system use as the document description?
Question: What should a request for a certificate of correction filed via the patent electronic filing system use as the document description? Answer:...
MPEP Q & A 302: Major differences between 35 U.S.C. 102(c) and the CREATE Act
Question: What are the major differences between 35 U.S.C. 102(c) and the CREATE Act? Answer: The major differences between 35 U.S.C. 102(c) and the C...
MPEP Q & A 301: What does the prohibition on ex parte communications not extend to?
Question: All substantive communications with the Board regarding a proceeding must include all parties to the proceeding, except as otherwise authori...
MPEP Q & A 300: Difference between sequence listing requirements filed before or after July 1, 2022
Question: What is the difference between sequence listing requirements filed before or after July 1, 2022? Answer: For applications filed before July...
MPEP Q & A 299: What should a motion to exclude evidence include?
Question: What should a motion to exclude evidence include? Answer: A motion to exclude evidence should: (a) Identify where in the record the objectio...