MPEP Q & A 148: The Duty of Disclosure in Reexamination Proceedings

MPEP Q & A 75: Duty of Disclosure in Reexamination Proceedings: Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, by Patent Bar MPEP Q & A Podcast

3 min listen

MPEP Q & A 18: Duty to Disclose: Question: Who has a duty to disclose? Answer: The following individuals have a duty to disclose: each inventor each registered practitioner each assignee every other person who is substantially involved in the preparation or prosecution of the applicat... by Patent Bar MPEP Q & A Podcast

3 min listen

MPEP Q & A 16: Signature Required for Disclaimer in Patent or Reexamination Proceeding: Question: Who must a disclaimer be signed by in a patent or a reexamination proceeding? Answer: A disclaimer filed in a patent or a reexamination proceeding must be signed by either: the patentee (the assignee, by Patent Bar MPEP Q & A Podcast

3 min listen

MPEP Q & A 168: Competent Representation to a Client: Question: A practitioner shall provide competent representation to a client. What does competent representation to a client entail? Answer: Competent representation requires the legal, scientific, and technical knowledge, skill, by Patent Bar MPEP Q & A Podcast

3 min listen

MPEP Q & A 20: Details of Substantial New Question of Patentability: Question: What should a substantial new question of patentability not be based upon? Answer: A substantial new question cannot be based upon: prior art expressly relied upon by the examiner during the prosecution prior art which was actually discussed ... by Patent Bar MPEP Q & A Podcast

3 min listen

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

3 min listen

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

3 min listen

MPEP Q & A 88: What the Patent Prosecution Highway Attempts to Accomplish: Question: What does the Patent Prosecution Highway or PPH attempt to accomplish? Answer: The Patent Prosecution Highway, or PPH enables an applicant who receives a positive ruling on patent claims from one participating office to request accelerated pr... by Patent Bar MPEP Q & A Podcast

3 min listen

MPEP Q & A 228: Who is listed on the assignee section of a patent?: Question: Who will be listed in the assignee section of a patent? Answer: The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or for any patent that is grante... by Patent Bar MPEP Q & A Podcast

3 min listen

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

3 min listen

MPEP Q & A 137: Who May a Party Dissatisfied with a Final Decision in a Derivation Proceeding Appeal To?: Question: Who may a party dissatisfied with a final decision in a derivation proceeding appeal to? Answer: A party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit. by Patent Bar MPEP Q & A Podcast

2 min listen

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

4 min listen

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

3 min listen

MPEP Q & A 19: Items a Protestor Must Give the PTO: Question: What must a protestor give the PTO? Answer: A protestor must give the PTO: a listing of the patents, publications or other information relied upon a copy of each item listed a translation of non-English papers a concise explanation of the rel... by Patent Bar MPEP Q & A Podcast

3 min listen

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

4 min listen

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

3 min listen

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

4 min listen

MPEP Q & A 143: Who Decides Petitions for Derivation and Conducts Any Ensuing Derivation Proceeding?: Question: Who decides petitions for derivation and conducts any ensuing derivation proceeding? Answer: The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensuing derivation proceeding. by Patent Bar MPEP Q & A Podcast

2 min listen

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

3 min listen

MPEP Q & A 14: Request for Simultaneous Issue: Question: What must a request for simultaneous issue contain? Answer: The request must contain the following information about each allowed application for which simultaneous issue is requested; application number, filing date, name(s) of inventor(s), by Patent Bar MPEP Q & A Podcast

3 min listen

MPEP Q & A 60: Contents of a Request for Republication: Question: What must a request for republication include? Answer: A request for republication must include: a copy of the application in compliance with the Office Electronic Filing System (EFS) requirements, by Patent Bar MPEP Q & A Podcast

3 min listen

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

3 min listen

MPEP Q & A 241: Paying maintenance fee due prior to the issuance of a reissue patent: Question: If the maintenance fee is due prior to the issuance of a reissue patent, what will paying the maintenance fee maintain? Answer: If the maintenance fee is due prior to the issuance of a reissue patent, by Patent Bar MPEP Q & A Podcast

3 min listen

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

3 min listen

MPEP Q & A 49: Correspondence to a Different Address for a Supplemental Examination Proceeding: Question: How can a patent owner get the Office to send correspondence to a different address for the supplemental examination proceeding? Answer: If the patent owner desires the Office to send correspondence to a different address, by Patent Bar MPEP Q & A Podcast

3 min listen

MPEP Q & A 245: How is the effective filing date of a claimed invention determined?: Question: How is the effective filing date of a claimed invention determined? Answer: The effective filing date of a claimed invention is determined on a claim-by-claim basis. Chapter Details: The answer to this question can be found in chapter 2100 of... by Patent Bar MPEP Q & A Podcast

3 min listen

MPEP Q & A 273: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee?: Question: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee? Answer: Yes, requests for ex parte reexamination filed on or after January 16, 2018 may be filed with a reduced filing fee. by Patent Bar MPEP Q & A Podcast

3 min listen

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

4 min listen

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

3 min listen

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

3 min listen

Discover this podcast and so much more

MPEP Q & A 148: The Duty of Disclosure in Reexamination Proceedings

MPEP Q & A 148: The Duty of Disclosure in Reexamination Proceedings

Description

Titles in the series (100)

More Episodes from Patent Bar MPEP Q & A Podcast

Related podcast episodes