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

Question:

What does routine discovery include?

Answer:

Routine discovery includes:



* Production of any exhibit cited in a paper or testimony;

* The cross-examination of the other sides declarants; and

* Relevant information that is inconsistent with a position advanced during the proceeding.



Routine discovery places the parties on a level playing field and streamlines the proceeding. Board authorization is not required to conduct routine discovery, although the Board will set the times for conducting this discovery in its Scheduling Order.

Chapter Details:

This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question comes from the following supplement: “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. The following is a brief summary of the appropriate section in the supplement.

F. Discovery

Discovery in legal proceedings is a sequenced process that allows each party to gather evidence and respond to the opponent’s grounds. It begins with the patent owner and is focused on creating a fair record and assisting the board in assessing witness credibility. 

There are two main types of discovery: routine and additional. Routine discovery includes the production of cited exhibits, cross-examination of declarants, and information inconsistent with a position advanced during the proceeding. 

Additional discovery, requested through a motion, involves more extensive information and is granted under either “interests of justice” or “good cause” standards. Other elements of the discovery process include document translation, witness expenses, and compelled testimony. 

Question:

What should a request for a certificate of correction filed via the patent electronic filing system use as the document description?

Answer:

“A request for a certificate of correction filed via the patent electronic filing system should use the document description: Request for Certificate of Correction.”

Chapter Details:

The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of Patents.

The answer is from the 9th Edition, Revision 07.2022, Published February 2023. 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 1480 of the MPEP.  The following is a brief summary of section 1480.

1480 Certificates of Correction — Office Mistake

This section discusses Certificates of correction when the Office made the mistake. Certificates of correction are used for minor mistakes (like typos) in issued patents. It includes additional information on when to use a Certificate of correction.

Question:

What are the major differences between 35 U.S.C. 102(c) and the CREATE Act?

Answer:

The major differences between 35 U.S.C. 102(c) and the CREATE Act are the following:



* 35 U.S.C. 102(c)is keyed to the effective filing date of the claimed invention, while the CREATE Act (pre-AIA 35 U.S.C. 103(c)) focuses on the date that the claimed invention was made; and

* The 2004 CREATE Act provisions (pre-AIA 35 U.S.C. 103(c)) only apply to obviousness rejections and not to anticipation and double patenting rejections. This follows from the fact that the CREATE Act merely provides that a reference may not be applied to support obviousness rejections under pre-AIA 35 U.S.C. 103(a), while the prior art exceptions of 35 U.S.C. 102(b)establish that a reference is not prior art for any purpose.



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 07.2022, Published February 2023. 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 804.03 of the MPEP.  The following is a brief summary of section 804.03.

804.03 Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement

This section covers double patenting in non-commonly owned inventions subject to a joint research agreement. The topics covered include double patenting. Claims in commonly owned applications of different inventive entities may be rejected on the ground of double patenting. The section also covers identifying commonly owned and non-commonly owned inventions subject to a joint research agreement as well as determining invention priority and rejections under 35 U.S.C. 102 and 103 and double patenting.

Question:

All substantive communications with the Board regarding a proceeding must include all parties to the proceeding, except as otherwise authorized. What does the prohibition on ex parte communications not extend to?

Answer:

All substantive communications with the Board regarding a proceeding must include all parties to the proceeding, except as otherwise authorized. The prohibition on ex parte communications does not extend to:



* Ministerial communications with support staff (for instance, to arrange a conference call);

* Conference calls or hearings in which opposing counsel declines to participate;

* Informing the Board in one proceeding of the existence or status of a related Board proceeding; or

* Reference to a pending case in support of a general proposition (for instance, citing a published opinion from a pending case or referring to a pending case to illustrate a systemic problem).



Chapter Details:

This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question comes from the following supplement: “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. The following is a brief summary of the appropriate section in the supplement.

A. Jurisdiction and Management of the Record

The Board has exclusive jurisdiction over every application and patent involved in a derivation, IPR, PGR, or CBM proceeding, with ex parte reexamination and inter partes reexamination proceedings treated separately unless ordered by the Board. 

All substantive communications with the Board must include all parties, barring certain exceptions like arranging conference calls, to which the Board is receptive as a means of expediting issue resolution.

Question:

What is the difference between sequence listing requirements filed before or after July 1, 2022?

Answer:

For applications filed before July 1, 2022, the sequence listing can be a “Sequence Listing” (as an ACSII plain text file in compliance with 37 CFR 1.821-1.824) submission must be submitted via the USPTO patent electronic filing system or on read-only optical disc.

For applications filed on or after July 1, 2022, the sequence listing must be a “Sequence Listing XML” (as an XML file in compliance with 37 CFR 1.831-1.834) submission can be submitted via the USPTO patent electronic filing system or on read-only optical disc.

Chapter Details:

The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application.

The answer is from the 9th Edition, Revision 07.2022, Published February 2023. 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 608.05(c) of the MPEP.  The following is a brief summary of section 608.05(c).

608.05(c) Submissions of Biological Sequence Listings

Applications disclosing nucleotide and/or amino acid sequences, as defined in 37 CFR 1.821(a) for applications filed before July 1, 2022 or as defined in 37 CFR 1.831(b) for applications filed on or after July 1, 2022, are required to provide the biological sequence information in a sequence listing.

For applications filed before July 1, 2022, the sequence listing can be a “Sequence Listing” (as an ACSII plain text file in compliance with 37 CFR 1.821-1.824) submission must be submitted via the USPTO patent electronic filing system or on read-only optical disc.

For applications filed on or after July 1, 2022, the sequence listing must be a “Sequence Listing XML” (as an XML file in compliance with 37 CFR 1.831-1.834) submission can be submitted via the USPTO patent electronic filing system or on read-only optical disc.

Question:

What should a motion to exclude evidence include?

Answer:

A motion to exclude evidence should:



* (a) Identify where in the record the objection originally was made;

* (b) Identify where in the record the evidence sought to be excluded was relied upon by an opponent;

* (c) Address objections to exhibits in numerical order; and

* (d) Explain the basis and grounds for each objection. A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular fact. A motion to exclude is not a vehicle for addressing the weight to be given evidence—arguments regarding weight should appear only in the merits documents. Nor should a motion to exclude address arguments or evidence that a party believes exceeds the proper scope of reply or sur-reply.



Chapter Details:

This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question comes from the following supplement: “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. The following is a brief summary of the appropriate section in the supplement.

K. Challenging Admissibility; Motions to Exclude; Motions to Strike

Parties can challenge the admissibility of deposition evidence during the deposition itself, or for other evidence, objections must be filed within five business days of service of the evidence. To preserve objections, a motion to exclude the evidence must be filed, with due dates usually set in the Scheduling Order. 

If a party believes an opposing party’s brief raises new issues, presents late evidence, or exceeds the proper scope of reply or sur-reply, they may request authorization to file a motion to strike. Generally, such requests should be made within one week of the allegedly improper submission, and the Board decides on these requests on a case-by-case basis.