Patent Bar MPEP Q & A Podcast

Lisa Parmley, USPTO Patent Practitioner #51006

Patent Bar Review Podcast

  • 3 minutes 2 seconds
    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 reissue application to determine whether the original patent requirement is satisfied, by considering if: (A) the claims presented in the reissue application are described in the original patent specification and enabled by the original […]

    The post MPEP Q & A 317: How can you determine whether the original patent requirement is satisfied in a reissue application? appeared first on Patent Education Series.

    17 December 2024, 3:25 pm
  • 3 minutes 52 seconds
    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 necessary to change the inventorship named in the application? Answer: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, it may become necessary to […]

    The post MPEP Q & A 316: Is it ever necessary to change the inventorship named in the application? appeared first on Patent Education Series.

    3 December 2024, 3:20 pm
  • 3 minutes 11 seconds
    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” context of use and, therefore, do not define “substantial utilities.” Answer: The following are examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” […]

    The post MPEP Q & A 315: List examples of situations that confirm a “real world” context of use. appeared first on Patent Education Series.

    19 November 2024, 3:20 pm
  • 3 minutes 30 seconds
    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 reexamination request. What will that request indicate for each patent and printed publication cited in the request? Answer: If the examiner concludes that no substantial new question of patentability has been raised, the […]

    The post MPEP Q & A 314: What will the request indicate for each patent and printed publication cited in the request? appeared first on Patent Education Series.

    5 November 2024, 3:30 pm
  • 2 minutes 19 seconds
    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: Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except: (1) A mistake on the part […]

    The post MPEP Q & A 313: Reasons why the Office will withdraw the application from issue. appeared first on Patent Education Series.

    22 October 2024, 2:30 pm
  • 3 minutes 18 seconds
    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 petitioner previously filed a petition directed to the same claims of the same patent; Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition […]

    The post MPEP Q & A 312: List two General Plastic non-exclusive factors. appeared first on Patent Education Series.

    8 October 2024, 2:40 pm
  • 3 minutes 23 seconds
    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 CFR 1.103(a) must: (A) be presented as a separate paper; (B) be accompanied by the petition fee set forth in 37 CFR 1.17(g); (C) request a specific and reasonable period of suspension not greater than […]

    The post MPEP Q & A 311: Two requirements for a petition for suspension of action under 37 CFR 1.103(a) appeared first on Patent Education Series.

    24 September 2024, 2:40 pm
  • 3 minutes 29 seconds
    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 application (except a Notice of Omitted Items in a Nonprovisional Application as discussed above). List two examples of these notices. Answer: These notices include: A Notice of Incomplete Nonprovisional Application (except as to […]

    The post MPEP Q & A 310: List two examples of notices issued as part of the pre-examination processing of an application appeared first on Patent Education Series.

    10 September 2024, 2:40 pm
  • 3 minutes 15 seconds
    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 application filing date involves the submission of: a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text file submitted via the USPTO patent electronic […]

    The post MPEP Q & A 309: List two requirements for adding a “Sequence Listing” after the application filing date? appeared first on Patent Education Series.

    27 August 2024, 2:40 pm
  • 3 minutes 35 seconds
    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 more of the following arguments: The petitioner is statutorily barred from pursuing a review; The references asserted to establish that the claims are unpatentable are not in fact printed publications; The prior art […]

    The post MPEP Q & A 308: What type of arguments should a patent owner preliminary response include? appeared first on Patent Education Series.

    13 August 2024, 2:40 pm
  • 2 minutes 55 seconds
    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 are not permitted except for: IDSs electronically submitted using the USPTO patent electronic filing system; or copies of large tables, computer program listings, and sequence listings submitted as a PDF […]

    The post MPEP Q & A 307: When are electronic means or medium for filing IDSs permitted? appeared first on Patent Education Series.

    30 July 2024, 2:40 pm
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