50 episodes

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.

Patent Bar MPEP Q & A Podcast Lisa Parmley, USPTO Patent Practitioner #51006

    • Courses

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.

    MPEP Q & A 209: Submission of an Oath or Declaration From a Prior Application

    MPEP Q & A 209: Submission of an Oath or Declaration From a Prior Application

    Question:

    Does a copy of an oath or declaration from a prior application need to be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012 even if the oath or declaration identifies the application number of the prior application?

    Answer:

    Yes, a copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012, even if the oath or declaration identifies the application number of the prior application.

    However, if such a copy of the oath or declaration is filed after the filing date of the continuation or divisional application and an application number has been assigned to the continuation or divisional application, the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file. Furthermore, applicant should also label the copy of the oath or declaration with the application number of the continuation or divisional application in the event that the cover letter is separated from the copy of the oath or declaration.

    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 08.2017. 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 201.06(c) of the MPEP.  The following is a brief summary of section 201.06(c).

    201.06(c) 37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure

    This section lays out details of 37 C.F.R. 1.53(b) including application types filed under the statute and the requirements for completeness. There are differences in the requirements for applications filed under 37 C.F.R. 1.53(b) before and after 9/16/12. These differences are discussed as well as details of the oath or declaration along with the specification and drawings.




    In addition, this section covers incorporating by reference the prior application, inventorship, substitute statements, changing the attorney correspondence address, small entity or microentity status, copies of affidavits, extensions of time, abandonment of the prior nonprovisional application and examination.

    • 4 min
    MPEP Q & A 208: Filing a Petition to Make an Application Special Without a Fee

    MPEP Q & A 208: Filing a Petition to Make an Application Special Without a Fee

    Question:

    Is it possible to file a petition to make an application special without a fee?

    Answer:

    A petition to make an application special may be filed without a fee if the basis for the petition is:

    (1) The applicant’s age or health; or

    (2) That the invention will materially:



    * (i) Enhance the quality of the environment;

    * (ii) Contribute to the development or conservation of energy resources; or

    * (iii) Contribute to countering terrorism.



    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 08.2017. 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 708.01 of the MPEP.  The following is a brief summary of section 708.01.

    708.01 List of Special Cases

    This section references 37 C.F.R. 1.102 which discusses the advancement of examination. It includes a list of special cases which are advanced out of turn for examination.

    • 2 min
    MPEP Q & A 207: When Can a Practitioner Enter a Business Transaction with a Client

    MPEP Q & A 207: When Can a Practitioner Enter a Business Transaction with a Client

    Question:

    When can a practitioner enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client?

    Answer:

    A practitioner shall not enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client unless:



    * The transaction and terms on which the practitioner acquires the interest are fair and reasonable to the client and are fully disclosed and transmitted in writing in a manner that can be reasonably understood by the client;

    * The client is advised in writing of the desirability of seeking and is given a reasonable opportunity to seek the advice of independent legal counsel in the transaction; and

    * The client gives informed consent, in a writing signed by the client, to the essential terms of the transaction and the practitioner’s role in the transaction, including whether the practitioner is representing the client in the transaction.



    Chapter Details:

    The answer to this question can be found in a USPTO supplement. This chapter covers correction of patents.

    The answer is from the 9th Edition, Revision 08.2017 USPTO supplement. Depending on future changes to the MPEP and the tested supplements, the question and answer may or may not be applicable in later Editions or revisions.

    Section Summary:

    This question comes from the following supplement: Changes to Representation of Others Before the USPTO Final Rules

    Changes to Representation of Others Before the USPTO Final Rules

    The United States Patent and Trademark Office (Office or USPTO) is adopting the new USPTO Rules of Professional Conduct (USPTO Rules), which are based on the American Bar Association’s (ABA) Model Rules of Professional Conduct (ABA Model Rules).

    The Office has also revised the existing procedural rules governing disciplinary investigations and proceedings.

    • 3 min
    MPEP Q & A 206: Requirements for an Applicant to Rescind Nonpublication Requests

    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 is directed;

    * State in a conspicuous manner that the request that the application is not to be published under 35 U.S.C. 122(b) is rescinded; and

    * Be signed in compliance with § 1.33(b).



    Chapter Details:

    The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions.

    The answer is from the 9th Edition, Revision 08.2017. 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 1123 of the MPEP.  The following is a brief summary of section 1123.

    1123 Rescission of a Nonpublication Request

    An applicant may rescind a previously-filed nonpublication request at any time. This section outlines how an applicant may rescind nonpublication requests. For instance, applicants are strongly encouraged to provide a notice of foreign filing whenever rescinding a nonpublication request in anticipation of filing a counterpart application in an eighteen-month publication country.

    • 3 min
    MPEP Q & A 205: Meaning of Claims Limited to Species

    MPEP Q & A 205: Meaning of Claims Limited to Species

    Question:

    What is the meaning of claims limited to species?

    Answer:

    Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a claim may encompass two or more of the disclosed embodiments (and thus be designated a generic or genus claim).

    Species always refer to the different embodiments of the invention. Species may be either independent or related as disclosed.

    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 08.2017. 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 806.04(e) of the MPEP.  The following is a brief summary of section 806.04(e).

    806.04(e) Claims Limited to Species

    Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a claim may encompass two or more of the disclosed embodiments (and thus be designated a generic or genus claim).


    Species always refer to the different embodiments of the invention. Species may be either independent or related as disclosed.

    • 3 min
    MPEP Q & A 204: Definition of a National Application

    MPEP Q & A 204: Definition of a National Application

    Question:

    What is the definition of a national application as described in chapter 200 of the MPEP?

    Answer:

    A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.

    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 08.2017. 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 201.01 of the MPEP.  The following is a brief summary of section 201.01.

    201.01 National Applications

    This section covers application types filed under 35 U.S.C. 111. It briefly discusses the difference between provisional and nonprovisional applications. In addition, this section covers the difference between national applications filed before and on or after September 16, 2012.

    • 3 min

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