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

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. by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 61: Passing Jurisdiction onto the Board: Question: When does jurisdiction over the proceeding pass to the Board? Answer: Jurisdiction over the proceeding passes to the Board on filing of a reply brief or the expiration of time to file a reply brief. by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 294: What are the two aspects every requirement to restrict has?: Question: What are the two aspects every requirement to restrict has? Answer: Every requirement to restrict has two aspects: the reasons (as distinguished from the mere statement of conclusion) why each invention as claimedis either independent or dist... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 11: Items Required in an Appeal Brief: Question: List two items which are required in an appeal brief. Answer: The specific items required in an appeal brief are: (i) Real party in interest. (ii) Related appeals, interferences, and trials. (iii) Summary of claimed subject matter. by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 239: Can a patent owner avoid double patenting by disclaiming the earlier patent?: Question: Can a patent owner avoid double patenting by disclaiming the earlier patent? Answer: “[A] patent owner cannot avoid double patenting by disclaiming the earlier patent.” Chapter Details: The answer to this question can be found in chapter 800 ... by Patent Bar MPEP Q & A Podcast

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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 quest... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 293: Who conducts derivation proceedings, inter partes reviews, and post-grant reviews?: Question: Who conducts derivation proceedings, inter partes reviews, and post-grant reviews? Answer: The Board is to conduct derivation proceedings, inter partes reviews, and post-grant reviews. Chapter Details: This question comes from the following s... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 32: Circumstance Where Joint Ownership Exists: Question: Name one circumstance where joint ownership exists. Answer: Joint ownership occurs when any of the following cases exist: Multiple partial assignees of the patent property; Multiple inventors who have not assigned their right, by Patent Bar MPEP Q & A Podcast

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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 ... by Patent Bar MPEP Q & A Podcast

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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, by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 295: Which of the new trial proceedings can the patent owner file a preliminary response for?: Question: Which of the following new trial proceedings can the patent owner file a preliminary response for? Answer: The patent owner is afforded an opportunity to file a preliminary response for inter partes review (IPR), postgrant review (PGR), by Patent Bar MPEP Q & A Podcast

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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., by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 8: Filings Third-Party Submissions May Not Be Directed To: Question: List at least one type of filing that third-party submissions may not be directed to. Answer: Third-party submissions may not be directed to: provisional applications, issued patents, reissue applications, and reexamination proceedings. by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 36: Documents a Person Acting in a Representative Capacity May Not Sign: Question: List two documents a person acting in a representative capacity may not sign. Answer: A person acting in a representative capacity may not sign: a power of attorney, a document granting access to an application, by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 67: First Step of the Recapture Rule: Question: What is the first step of the three-step process for the recapture rule? Answer: The first step of the three-step process for the recapture rule is: (1) first, we determine whether, and in what respect, by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 251: Benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e): Question: What are the benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) rather than requesting conversion? Answer: Claiming the benefit of the provisional appl... by Patent Bar MPEP Q & A Podcast

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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; th... by Patent Bar MPEP Q & A Podcast

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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... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 10: Contesting an Objection: Question: What is one way an applicant may contest an objection? Answer: An applicant may contest an objection by: asking the examiner to reconsider it. filing a petition to the Commissioner. Chapter Details: The answer to this question can be found in... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 48: Type of Issues Triggering Rejections: Question: Name one type of issue that may trigger a rejection. Answer: Rejections are usually made due to issues with one of the following: unpatentable subject matter or lack of utility (35 U.S.C. 101) issues with novelty (35 U.S.C. by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 65: Underlying Factual Inquiries of Obviousness: Question: List one of the underlying factual inquiries of obviousness. Answer: The factual inquiries enunciated by the Court are as follows: Determining the scope and content of the prior art; and Ascertaining the differences between the claimed invent... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 3: Significant Differences Between Nonprovisional and Provisional Applications: Question: List two significant differences between nonprovisional applications and provisional applications. Answer: The following list includes significant differences between nonprovisional applications and provisional applications: No claim is requi... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 62: Circumstances Where Applicants May Make Amendments: Question: Name one circumstance where an applicant may make amendments. Answer: The applicant may amend: before or after the first Office action and also after the second Office actions; after final rejection, by Patent Bar MPEP Q & A Podcast

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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 ... by Patent Bar MPEP Q & A Podcast

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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 i... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 253: What must a claim in dependent form contain?: Question: What must a claim in dependent form contain? Answer: A claim in dependent form shall contain: (i) a reference to a claim previously set forth, and (ii) then specify a further limitation of the subject matter claimed. by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 280: When does the revocation of a filing receipt license become effective?: Question: When does the revocation of a filing receipt license become effective? Answer: The revocation becomes effective on the date on which the notice is mailed. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. by Patent Bar MPEP Q & A Podcast

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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 wh... by Patent Bar MPEP Q & A Podcast

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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 reje... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 26: Information Submitted When Paying Maintenance Fee: Question: List two pieces of information regarding the patent that should be submitted when paying the maintenance fee. Answer: The information regarding the patent that should be submitted with the maintenance fee includes: the fee year the amount of ... by Patent Bar MPEP Q & A Podcast

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

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

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