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

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 interfere... 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 21: Request for Reinstatement of All or Part of the Period of Adjustment: Question: What must a request for reinstatement of all or part of the period of adjustment reduced for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifyi... by Patent Bar MPEP Q & A Podcast

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

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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. by Patent Bar MPEP Q & A Podcast

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

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MPEP Q & A 270: Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for?: Question: Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for? Answer: Once appellant has filed a notice of appeal, appellant also may request that prosecution be reopened for the ... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 23: Response to a Notice of Noncompliant Supplemental Examination Request: Question: How can a patent owner file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request? Answer: The patent owner has one opportunity to file a corrected request in response to a Notice of Noncompliant Supplem... by Patent Bar MPEP Q & A Podcast

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

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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, by Patent Bar MPEP Q & A Podcast

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

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MPEP Q & A 25: Conditions for First Application to be Granted a Notice of Allowance: Question: Under what conditions will a first application usually be granted a Notice of Allowance and become a patent in spite of a second application with potentially interfering claims? Answer: A first application will usually be granted a Notice of ... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 250: What are examples of situations where ownership must be established?: Question: What are examples of situations where ownership must be established? Answer: Examples of situations where ownership must be established are when the assignee who is not the applicant: signs a request for status of an application or gives a po... by Patent Bar MPEP Q & A Podcast

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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, by Patent Bar MPEP Q & A Podcast

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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., 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 40: Situations Where There May be a Remand For Examiner Action Not For Further Consideration of a Rejection: Question: Name two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection. Answer: The following are two examples of situations where there may be a remand by the Board f... by Patent Bar MPEP Q & A Podcast

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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 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 communi... 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 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 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 co... by Patent Bar MPEP Q & A Podcast

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Ask The Patent Attorney: Is My Attorney Getting Me The Right Claims? (Part 2): Litigation Quality Patent: Claim Scope by Litigation Quality Patent PatentCast

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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... by Patent Bar MPEP Q & A Podcast

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

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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 ... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 1: Major Types of Patent Status: Question: What are the 3 major types of patent status? Answer: The 3 major types of patent status include: pending applications, abandoned applications, and issued patents. Chapter Details: The answer to this question can be found in chapter 100 of the... by Patent Bar MPEP Q & A Podcast

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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. by Patent Bar MPEP Q & A Podcast

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

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

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