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Patent Bar MPEP Q & A Podcast
Lisa Parmley, USPTO Patent Practitioner #51006
300 episodes
4 days ago
Brought to you by PatentEducationSeries.com, based on their widely popular Patent Bar Review Course ... the PES Patent Bar Review.

This is the perfect podcast to study for the Patent Bar exam on the go. The Patent Bar MPEP Q & A Podcast covers one specific point from the MPEP per 3 to 5 minute episode. You'll get a question along with the detailed answer. In addition to the question and answer you'll get a detailed summary of the exact section where the answer is found. It's short, but packed full of valuable information. Perfect for exercising, driving, or waiting in line.

Please visit PatentEducationSeries.com for more free information to help you learn more about and pass the Patent Bar exam. We're here to help you succeed. We've helped scores of engineers, scientists, and attorneys get on the road to a new career as a Patent Practitioner since 2001. The contents of this podcast is not legal advice; for full disclaimer information visit: PatentEducationSeries.com.
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Education
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All content for Patent Bar MPEP Q & A Podcast is the property of Lisa Parmley, USPTO Patent Practitioner #51006 and is served directly from their servers with no modification, redirects, or rehosting. The podcast is not affiliated with or endorsed by Podjoint in any way.
Brought to you by PatentEducationSeries.com, based on their widely popular Patent Bar Review Course ... the PES Patent Bar Review.

This is the perfect podcast to study for the Patent Bar exam on the go. The Patent Bar MPEP Q & A Podcast covers one specific point from the MPEP per 3 to 5 minute episode. You'll get a question along with the detailed answer. In addition to the question and answer you'll get a detailed summary of the exact section where the answer is found. It's short, but packed full of valuable information. Perfect for exercising, driving, or waiting in line.

Please visit PatentEducationSeries.com for more free information to help you learn more about and pass the Patent Bar exam. We're here to help you succeed. We've helped scores of engineers, scientists, and attorneys get on the road to a new career as a Patent Practitioner since 2001. The contents of this podcast is not legal advice; for full disclaimer information visit: PatentEducationSeries.com.
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Education
Episodes (20/300)
Patent Bar MPEP Q & A Podcast
MPEP Q & A 344: How can an applicant overcome a statutory double patenting rejection?

Question:
How can an applicant overcome a statutory double patenting rejection?
Answer:
A terminal disclaimer cannot be filed to obviate a statutory double patenting rejection. A statutory double patenting rejection can be overcome by canceling or amending the conflicting claims so they are no longer coextensive in scope. A complete response to a statutory double patenting rejection is either a reply by applicant showing that the claims subject to the rejection are not the same as the reference claims, an amendment in response to the statutory double patenting rejection, or cancelation of the conflicting claims. Such a response is required even when the statutory double patenting rejection is provisional.
When two or more utility or plant patent applications, filed on or after June 8, 1995, each contain a provisional statutory double patenting rejection, and that is the only rejection remaining in the application having the earliest patent term filing date, the examiner should withdraw the rejection in the application having the earliest patent term filing date and permit that application to issue as a patent, thereby converting the provisional statutory double patenting rejection in the other application(s) into a statutory double patenting rejection when the application with the earliest patent term filing date issues as a patent.
Chapter Details:
The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting.
The answer is from the 9th Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 804 of the MPEP.  The following is a brief summary of section 804.
804 Definition of Double Patenting
This section provides specific details on double patenting. Essentially, double patenting seeks to prevent the unjustified extension of patent rights beyond the term of a patent. This section covers when double patenting is possible along with the requirements of double patenting rejections. Obviousness type nonstatutory double patenting is also discussed including two-way obviousness.
This section also discusses disclaimers which may be used to disclaim or dedicate part of a patent term. The topics discussed include terms, terminal disclaimers, statutory double patenting rejections, and nonstatutory rejections.

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4 days ago
3 minutes 39 seconds

Patent Bar MPEP Q & A Podcast
MPEP Q & A 343: Can prior art submissions occur after the filing of the patent?

Question:
Can any further submission of prior art by the same real party in interest be considered after the filing of the protest?
Answer:
After the filing of the protest, no further submission of prior art by the same real party in interest will be considered, except for new, non-cumulative prior art submitted requires that a second or subsequent protest by the same real party in interest include:

* (A) an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier;
* (B) an explanation as to why the significantly different issue(s) were not earlier presented; and
* (C) the processing fee.

Chapter Details:
The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protest.
The answer is from the 9th Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1901.07 of the MPEP.  The following is a brief summary of section 1901.07.
1901.07 Protestor Participation
37 CFR 1.291 does not permit protestor, or any other member of the public, to contact or receive information from the Office as to the disposition or status of the protest, or the application to which it is directed, or to participate in any Office proceedings relating to the protest.

* The Office does not serve copies of Office actions or other documents mailed by the Office on protestors, and does not require applicants to serve copies of papers filed with the Office on protestors.
* Furthermore, a protestor is not permitted to participate in interviews, appeal a decision by the examiner adverse to the protestor to the Patent Trial and Appeal Board, or participate in an appeal by applicant.



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2 weeks ago
2 minutes 59 seconds

Patent Bar MPEP Q & A Podcast
MPEP Q & A 342: When is a 35 U.S.C. 102 rejection over multiple references held to be proper?

Question:
When has a 35 U.S.C. 102 rejection over multiple references been held to be proper when the extra references are cited?
Answer:
Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:

* (A) Prove the primary reference contains an “enabled disclosure;”
* (B) Explain the meaning of a term used in the primary reference; or
* (C) Show that a characteristic not disclosed in the reference is inherent.

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 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2131.01 of the MPEP.  The following is a brief summary of section 2131.01.
2131.01 Multiple Reference 35 U.S.C. 102 Rejections
Normally, only one reference should be used in making a rejection under 35 U.S.C. 102.
However, 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 that a characteristic not disclosed in the reference is inherent. This section provides details on these instances.



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1 month ago
2 minutes 44 seconds

Patent Bar MPEP Q & A Podcast
MPEP Q & A 341: Circumstances surrounding claim for foreign priority.

Question:
What happens when the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent?
Answer:
When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim.
Chapter Details:
The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types and Status of Application; Benefit and Priority Claims.
The answer is from the 9th Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 215 of the MPEP.  The following is a brief summary of section 215.
215 Certified Copy of Foreign Application
The applicant must furnish a certified copy or the foreign priority application. This section covers details of the certified copy including the time for filing it (both in an application filed before, or on or after March 16, 2013).
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1 month ago
2 minutes 32 seconds

Patent Bar MPEP Q & A Podcast
MPEP Q & A 340: What are non-limiting examples of claims that are not directed to any of the statutory categories?

Question:
What are some non-limiting examples of claims that are not directed to any of the statutory categories?
Answer:
Non-limiting examples of claims that are 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”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations;
* Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave; and
* Subject matter that the statute expressly prohibits from being patented, such as humans per se, which are excluded under The Leahy-Smith America Invents Act (AIA)

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 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2106.03 of the MPEP.  The following is a brief summary of section 2106.03.
2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter
The four categories of statutory subject matter are; processes, machines, manufactures, and compositions of matter. This section covers each of the categories along with details on how to determine whether a claim fits in a statutory category.
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2 months ago
2 minutes 41 seconds

Patent Bar MPEP Q & A Podcast
MPEP Q & A 339: When is information material to patentability according to the duty to disclose?

Question:
When is information material to patentability according to the duty to disclose?
Answer:
Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

* (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
* (2) It refutes, or is inconsistent with, a position the applicant takes in:

* (i) Opposing an argument of unpatentability relied on by the Office, or
* (ii) Asserting an argument of patentability.



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 Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2001.05 of the MPEP.  The following is a brief summary of section 2001.05.
2001.05 Materiality Under 37 CFR 1.56(b)
If information is not material, there is no duty to disclose the information to the Office. The Office believes that most applicants will wish to submit the information, however, even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality.
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2 months ago
2 minutes 26 seconds

Patent Bar MPEP Q & A Podcast
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 language translation of a non-English language foreign application is required:

* 1) the translation must be that of the certified copy (of the foreign application as filed) and
* 2) it must be filed together with a statement that the translation of the certified copy is accurate.

Chapter Details:
The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types and Status of Application; Benefit and Priority Claims.
The answer is from the 9th Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 214 of the MPEP.  The following is a brief summary of section 214.
214 Formal Requirements of Claim for Foreign Priority
This section covers the time for filing a priority claim and unintentionally delayed priority claims.
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2 months ago
2 minutes 8 seconds

Patent Bar MPEP Q & A Podcast
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 following are examples of the kinds of information, in addition to prior art documents, which can be relied on in a protest:

* (A) Information demonstrating that the invention was publicly known or used by others and is barred from patenting under 35 U.S.C. 102(a)(1)and/or 103 or pre-AIA 35 U.S.C. 102(a) and/or 103.
* (B) Information that the invention was in public use or on sale and is barred from patenting under 35 U.S.C. 102(a)(1)or pre-AIA 35 U.S.C. 102(b).
* (C) Information that the inventor “has abandoned the invention” or “did not himself invent the subject matter sought to be patented”
* (D) Information relating to inventorship under pre-AIA 35 U.S.C. 102(g).
* (E) Information relating to compliance with 35 U.S.C. 112.
* (F) Any other information demonstrating that the application lacks compliance with the statutory requirements for patentability.
* (G) Information indicating “fraud” or “violation of the duty of disclosure” may be the subject of a protest. Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues.

Chapter Details:
The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protest.
The answer is from the 9th Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1901.02 of the MPEP.  The following is a brief summary of section 1901.02.
1901.02 Information Which Can Be Relied on in Protest
Any information which, in the protestor’s opinion, would make the grant of a patent improper can be relied on in a protest.

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3 months ago
3 minutes 7 seconds

Patent Bar MPEP Q & A Podcast
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 documentation is submitted to a regulatory review body, such as the U.S. Food & Drug Administration (FDA), and is material to any pending patent application or reexamination proceeding, such documentation should be submitted for Office review.
While the considerations made by the FDA for approving clinical trials are different from those made by the USPTO in determining whether a claim is patentable, submissions, particularly any assertion that is made which is contradictory to assertions made to the examiner, may be material to ongoing patent proceedings.
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 Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2001.06(e) of the MPEP.  The following is a brief summary of section 2001.06(e).
2001.06(e) Information Relating to Regulatory Review
Where relevant documentation is submitted to a regulatory review body, such as the U.S. Food & Drug Administration (FDA), and is material to any pending patent application or reexamination proceeding, such documentation should be submitted for Office review. While the considerations made by the FDA for approving clinical trials are different from those made by the USPTO in determining whether a claim is patentable, submissions, particularly any assertion that is made which is contradictory to assertions made to the examiner, may be material to ongoing patent proceedings.
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3 months ago
2 minutes 56 seconds

Patent Bar MPEP Q & A Podcast
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 no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau.
The search fee will be refunded if the application is withdrawn before the search copy is transmitted to the International Searching Authority. The transmittal fee will not be refunded.
According to 37 CFR 1.446(e), the handling fee will be refunded if the Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau.
Refund of the supplemental search fee will be made if the applicant is successful in a protest to a holding of lack of unity of invention.
The supplemental search fee must be paid and be accompanied by (1) a protest and (2) a request for refund of the supplemental search fee.
If the receiving Office and International Searching Authority are not the same Office, any request for refund of the search fee made after the search copy has been transmitted to the International Searching Authority must be directed to the International Searching Authority and not to the receiving Office.
Chapter Details:
The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers Patent Cooperation Treaty.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1827.01 of the MPEP.  The following is a brief summary of section 1827.01.
1827.01 Refund of International Application Fees
The search fee will be refunded if no international filing date is accorded or if the application is withdrawn before the search copy is transmitted to the International Searching Authority. The transmittal fee will not be refunded.
The handling fee will be refunded if the Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau.
Refund of the supplemental search fee will be made if the applicant is successful in a protest to a holding of lack of unity of invention.

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4 months ago
3 minutes 28 seconds

Patent Bar MPEP Q & A Podcast
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:
The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are:

* (1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or
* (2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexamined.

Chapter Details:
The answer to this question can be found in chapter 400 of the MPEP. This chapter covers Representative of Applicant or Owner.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 402.07 of the MPEP.  The following is a brief summary of section 402.07.
402.07 Assignee Revocation of Power of Attorney of Applicant and Appointment of New Power of Attorney
In applications filed on or after September 16, 2012, any power of attorney must be signed by the applicant or patent owner. In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an “irrevocable” right to prosecute the application had been given as in some government owned applications.
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4 months ago
3 minutes 1 second

Patent Bar MPEP Q & A Podcast
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 oath or declaration required?
Answer:
For applications filed on or after September 16, 2012, if additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, a supplemental reissue oath or declaration is not required.
However, where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue, the applicant must explicitly identify on the record an error being relied upon as the basis for reissue (e.g., in the remarks accompanying an amendment). Identification of the error must be conspicuous and clear, and must comply with 35 U.S.C. 251.
If the reissue application was filed before September 16, 2012 and the amendment corrects an “error” under 35 U.S.C. 251, then a supplemental oath or declaration will be required. The examiner should telephone applicant and request the supplemental oath or declaration, which must be filed before the application can be counted as an allowance.
Chapter Details:
The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of Patents.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1455 of the MPEP.  The following is a brief summary of section 1455.
1455 Allowance and Issue
This section covers allowance and issue including changes to the original patent and claim numbering. Renumbering of the original patent claims is never permitted. In addition, at least one claim of an allowable reissue application must be designated for printing in the Official Gazette.
This section also discusses parent application data on the bibliographic data sheet of the original patent file and examiner’s amendments and it briefly touches on reissue oaths or declarations.
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5 months ago
3 minutes 22 seconds

Patent Bar MPEP Q & A Podcast
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:
Yes, a provisional application that is relied upon for priority in a U.S. patent and is abandoned may be available through the Patent Center.
Generally though, provisional applications are not published and are generally preserved in confidence, as with any other unpublished application. Therefore, access to or copies of all or part of a provisional application are customarily only made available to the public under limited circumstances.
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 answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 103 of the MPEP.  The following is a brief summary of section 103.
103 Right of Public to Inspect Patent Files and Some Application Files
37 C.F.R. 1.11 discusses the rights the public has to inspect files (such as patents and certain types of applications). This section outlines the exact documents accessible to the public. It includes a brief discussion on accessing image file wrapper (IFW) applications, access to published U.S. patent applications, unpublished abandoned and pending applications that are identified, and access where part of an application is incorporated by reference in a U.S. patent application publication or a U.S. patent.
In addition, this section covers petitions for access by third parties, access where a patent relies on the filing date of an earlier but still pending application, access to provisional applications, access to applications involved in interferences or trials through the Patent Trial and Appeal Board, defensive publications, reissue applications, and requests for reexamination.
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5 months ago
3 minutes 11 seconds

Patent Bar MPEP Q & A Podcast
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 Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection was made includes an affirmance of the examiner’s rejection, the basis of the affirmed rejection is not open to further prosecution.
If the appellant elects to proceed before the examiner with regard to the new rejection, the Board’s affirmance of the examiner’s rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time.
Chapter Details:
The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeal.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1214.01 of the MPEP.  The following is a brief summary of section 1214.01.
1214.01 Procedure Following New Ground of Rejection by Board
This section covers the procedure following a new ground of rejection by the Board. When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant, as to each claim so rejected, has the option of reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence; or requesting rehearing before the Board.
The application will be remanded to the examiner for reconsideration if the appellant submits “an appropriate amendment” of the claims rejected by the Board, “or new evidence relating to the claims so rejected, or both.” Further details on the submission of an amendment or new evidence are detailed in this section.
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6 months ago
3 minutes

Patent Bar MPEP Q & A Podcast
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 initially processed by the Technology Center (TC) assigned the application. Technical support personnel in the TC will verify that:

* (A) the application is a utility or plant application (i.e., not a design application);
* (B) the application was filed on or after June 8, 1995;
* (C) prosecution in the application is closed (e.g., the last Office action is a final rejection, notice of allowance, or an Office action under Ex parte Quayle), or the application is under appeal);
* (D) the RCE was filed before the payment of the issue fee or, if not, a petition under 37 CFR 1.313 to withdraw the application from issue was filed and granted;
* (E) the application was pending (i.e., not patented or abandoned) when the RCE was filed;
* (F) the RCE was accompanied by the proper fee(s) including the RCE fee;
* (G) the RCE included a submission as required by 37 CFR 1.114; and
* (H) if the application is a national stage application, a compliant inventor’s oath or declaration for each inventor was submitted prior to or with the RCE.

Chapter Details:
The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 706.07(h) of the MPEP.  The following is a brief summary of section 706.07(h).
706.07(h) Request for Continued Examination (RCE) Practice
Filing a request for continued examination (RCE) provides a means for the applicant to continue with the prosecution of his or her application if prosecution becomes closed. Choosing an RCE is an alternative to filing a continuing application under 37 C.F.R. 1.53(b) or a CPA under 37 C.F.R. 1.53(d). This section covers RCE practice in detail.
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6 months ago
3 minutes 16 seconds

Patent Bar MPEP Q & A Podcast
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-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period:

* (1) Petitioner engaged in significant, constructive efforts with the examiner to resolve the issue outside of the petitions process
* (2) The examiner agreed, on the written record, to perform an action that would resolve the issue, but failed to do so
* (3) A showing of extenuating circumstances, such as delay caused by health, pandemic, natural disaster, etc.

Chapter Details:
The answer to this question can be found in chapter 1000 of the MPEP. This chapter covers Matters Decided by Various U.S. Patent and Trademark Office Officials.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1002 of the MPEP.  The following is a brief summary of section 1002.
1002 Petitions to the Director of the USPTO
This section references 37 C.F.R. 1.181 petitions to the Director of the USPTO. It also provides a brief overview of petitions to the Director. For instance, the mere filing of a petition will not stay the period for replying to an examiner’s action, nor act as a stay of other proceedings. The applicant will need to file the petition and any reply within the time to reply or successfully file an extension of time.
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7 months ago
2 minutes 43 seconds

Patent Bar MPEP Q & A Podcast
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 distinguished from the mere statement of conclusion) why each inventionas claimed is either independent or distinct from the other(s); and
* (B) the reasons why there would be a serious search and/or examination burden on the examiner if restriction is not required, i.e., the reasons for insisting upon restriction therebetween as set forth in the following sections.

Chapter Details:
The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 808 of the MPEP.  The following is a brief summary of section 808.
808 Reasons for Insisting Upon Restriction
Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious search and/or examination burden on the examiner if restriction is not required, i.e., the reasons for insisting upon restriction therebetween as set forth in the following sections.
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7 months ago
2 minutes 32 seconds

Patent Bar MPEP Q & A Podcast
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 should also be submitted for each patent on which a maintenance fee or surcharge is paid:

* (A) the fee year (i.e., 3 1/2, 7 1/2, or 11 1/2 year fee);
* (B) the amount of the maintenance fee and any surcharge being submitted;
* (C) any assigned customer number; and
* (D) whether entity status is being changed or claimed with the payment.

Chapter Details:
The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers Maintenance Fees.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2515 of the MPEP.  The following is a brief summary of section 2515.
2515 Information Required for Submission of Maintenance Fee Payment
This section establishes the guidelines for the submission of maintenance fees. It covers who may pay the fees and the identification required with the maintenance fee payment.
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8 months ago
2 minutes 15 seconds

Patent Bar MPEP Q & A Podcast
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:
For purposes of establishing micro entity status under the “gross income” basis, the application filing limit includes:

* (i) previously filed U.S. nonprovisional applications (e.g., utility, design, plant, continuation, and divisional applications),
* (ii) previously filed U.S. reissue applications,
* (iii) previously filed U.S. national stage applications under the Patent Cooperation Treaty (PCT), and
* (iv) previously filed international design applications under the Hague agreement that designate the U.S.

All such applications naming the inventor or a joint inventor are counted toward the application filing limit, whether the applications were filed before, on, or after March 19, 2013.
Chapter Details:
The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and Handling of Mail and Papers.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 509.04(a) of the MPEP.  The following is a brief summary of section 509.04(a).
509.04(a) Gross Income Basis for Micro Entity Status
This section discusses the basis of gross income for micro entity status. The requirements including gross income limits on applicants and inventors as well as gross income limits on parties with an ‘ownership interest’ are covered.
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8 months ago
2 minutes 44 seconds

Patent Bar MPEP Q & A Podcast
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 “PROTEST UNDER 37 CFR 1.291.” It is also important that any protest against a pending application specifically identify the application to which the protest is directed with the identification being as complete as possible. If possible, the following information should be placed on the first page of the protest:

* (A) Name of inventor(s)
* (B) Name of applicant(s).
* (C) Application number.
* (D) Filing date of application.
* (E) Title of invention.
* (F) Art unit number (if known).
* (G) Name of examiner to whom the application is assigned (if known).

Chapter Details:
The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protest.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1901.03 of the MPEP.  The following is a brief summary of section 1901.03.
1901.03 How Protest Is Submitted
A protest must be submitted in writing, must specifically identify the application to which the protest is directed by application number or serial number and filing date, and must include an information list of all documents, portions of documents, or other information submitted; a concise explanation of the relevance of each listed item; an English language translation of any non-English language document or other information identified in the information list; and be accompanied by a copy of each item in the information list except for U.S. patents and U.S. patent application publications.
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9 months ago
2 minutes 53 seconds

Patent Bar MPEP Q & A Podcast
Brought to you by PatentEducationSeries.com, based on their widely popular Patent Bar Review Course ... the PES Patent Bar Review.

This is the perfect podcast to study for the Patent Bar exam on the go. The Patent Bar MPEP Q & A Podcast covers one specific point from the MPEP per 3 to 5 minute episode. You'll get a question along with the detailed answer. In addition to the question and answer you'll get a detailed summary of the exact section where the answer is found. It's short, but packed full of valuable information. Perfect for exercising, driving, or waiting in line.

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