Patent Bar MPEP Q & A Podcast

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

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.

  1. 2 DAYS AGO

    MPEP Q & A 311: Two requirements for a petition for suspension of action under 37 CFR 1.103(a)

    Question: List two requirements for a petition for suspension of action under 37 CFR 1.103(a). Answer: A petition for suspension of action under 37 CFR 1.103(a) must: * (A) be presented as a separate paper; * (B) be accompanied by the petition fee set forth in 37 CFR 1.17(g); * (C) request a specific and reasonable period of suspension not greater than 6 months; and * (D) present good and sufficient reasons why the suspension is necessary. 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 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 709 of the MPEP.  The following is a brief summary of section 709. 709 Suspension of action This section discusses the suspension of an action. If an applicant waits a prolonged time for the examiner to send out an Office action, he or she may choose to file a request for a suspension of action. If it is granted, the request will cause a reduction in the patent term adjustment if any has accumulated. The reduction will be equal to the number of days beginning on the filing date for the request of the suspension of action and ending on the date of the termination of the suspension. It would be easy to confuse a suspension of action with an extension of reply (which will be discussed next). To distinguish, a suspension of action applies to an impending Office action by the examiner while an extension of time applies to an action by the applicant. If the examiner is taking an unduly long period of time to get back to the applicant, the applicant can file a suspension of action to gain back the time he or she lost on the patent term while waiting for the examiner to make the next move.

    3 min

  2. 10 SEPT

    MPEP Q & A 310: List two examples of notices issued as part of the pre-examination processing of an application

    Question: The three-month period in 37 CFR 1.704(b) applies to the Office notices and letters issued as part of the pre-examination processing of an application (except a Notice of Omitted Items in a Nonprovisional Application as discussed above). List two examples of these notices. Answer: These notices include: * A Notice of Incomplete Nonprovisional Application (except as to any period prior to the filing date ultimately accorded to the application); * A Notice to File Missing Parts of Non-Provisional Application; * An Informational Notice to Applicant; * A Notice to File Corrected Application Papers Filing Date Granted; or * A Notice to Comply with Requirements for Patent Applications Containing Nucleotide and/or Amino Acid Sequence Disclosures. Chapter Details: The answer to this question can be found in chapter 2700 of the MPEP. This chapter covers Patent Terms, Adjustments, and Extensions. 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 2732 of the MPEP.  The following is a brief summary of section 2732. 2732 Reduction of Period of Adjustment of Patent Term This section covers the reduction of the period of adjustment of the patent term. Essentially, the period of adjustment shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution (i.e., processing or examination) of an application. This section further covers the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of the application. Many other details are discussed.

    3 min

  3. 27 AUG

    MPEP Q & A 309: List two requirements for adding a “Sequence Listing” after the application filing date?

    Question: List two requirements for adding a “Sequence Listing” after the application filing date? Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: * a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text file submitted via the USPTO patent electronic filing system or on read-only optical disc(s), * a request that the amendment be made by either incorporation by reference in the case of ASCII plain text files or inserting text into the specification in the case of PDF image files or physical sheets of paper, * a statement that indicate the basis for the amendment in the application, as originally filed, * a statement that the “Sequence Listing” includes no new matter, * a new or substitute CRF when the submission is a PDF image file or on physical sheets of paper, and * a statement that the sequence information contained in the CRF is the same as the sequence information contained in the added “Sequence Listing” when the submission is a PDF image file or on physical sheets of paper. Chapter Details: The answer to this question can be found in chapter 2400 of the MPEP. This chapter covers Biotechnology. 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 2426 of the MPEP.  The following is a brief summary of section 2426. 2426 Amendments to Add or Replace a “Sequence Listing” and CRF Copy Thereof Subject to WIPO ST. 25 This section discusses how to use amendments to add or replace a sequence listing. 37 CFR 1.825 sets forth the procedures for adding or replacing the “Sequence Listing” and the CRF thereof.

    3 min

  4. 13 AUG

    MPEP Q & A 308: What type of arguments should a patent owner preliminary response include?

    Question: What type of arguments should a patent owner preliminary response include? Answer: A patent owner preliminary response may include one or more of the following arguments: * The petitioner is statutorily barred from pursuing a review; * The references asserted to establish that the claims are unpatentable are not in fact printed publications; * The prior art lacks a material limitation in a challenged claim; * The prior art does not teach or suggest a combination that the petitioner is advocating; * The petitioner’s claim interpretation for the challenged claims is unreasonable; * If a PGR or CBM petition raises 35 U.S.C. 101 grounds, a brief explanation as to how the challenged claims are directed to a patent-eligible invention; or * Reasons why the Director should exercise his or her discretion and deny institution under 35 U.S.C. 314 and/or 325(d). 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. C. Patent Owner Preliminary Response In IPR, PGR, and CBM proceedings, a patent owner can file a preliminary response within three months of receiving the petition notice. This response can present arguments and supporting evidence, including testimonial evidence, to argue against the institution of a review.  Potential arguments could include statutory bars against the petitioner, issues with the petitioner’s references or claim interpretations, or reasons why the Director should exercise discretion to deny institution.  The weight of testimonial evidence is decided case-by-case, and while no negative inference will be drawn if a patent owner decides not to present testimonial evidence, the patent owner must advise the Board if they choose not to rely on submitted testimony during trial.

    4 min

  5. 30 JUL

    MPEP Q & A 307: When are electronic means or medium for filing IDSs permitted?

    Question: When are electronic means or medium for filing IDSs permitted? Answer: As shown in chapter 600 … Electronic means or medium for filing IDSs are not permitted except for: * IDSs electronically submitted using the USPTO patent electronic filing system; or * copies of large tables, computer program listings, and sequence listings submitted as a PDF file and a “Sequence Listing XML” submitted as an XML file on a read-only optical disc which are cited in a paper IDS. 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 609.04(a) of the MPEP.  The following is a brief summary of section 609.04(a). 609.04(a) Content Requirements for an Information Disclosure Statement This section covers the content requirements for IDS’s. Each information disclosure statement must include a list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office. In addition to the list of information, each information disclosure statement must also include a legible copy of many items which are discussed here. Each information disclosure statement must further include a concise explanation of the relevance about the content of the information listed that is not in the English language.

    3 min

  6. 16 JUL

    MPEP Q & A 306: Sealed confidential information prior to the institution of the trial by which options?

    Question: Where a petitioner files a motion to seal with the petition that seeks entry of a protective order other than the default protective order, a patent owner may only access the sealed confidential information prior to the institution of the trial by which options? Answer: Where a petitioner files a motion to seal with the petition that seeks entry of a protective order other than the default protective order, a patent owner may only access the sealed confidential information prior to the institution of the trial by: * Agreeing to the terms of the protective order requested by the petitioner; * Agreeing to the terms of a protective order that the parties file jointly; or * Obtaining entry of a protective order (e.g., the default protective 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. E. Public Availability and Confidentiality This section discusses public availability and confidentiality. Legal proceedings strive to balance public transparency with the protection of sensitive information.  Parties can file a motion to seal specific documents, which are then provisionally sealed pending Board approval. If the motion is not approved, the information can be expunged, and redaction of sensitive information is preferred over sealing entire documents.

    3 min

  7. 2 JUL

    MPEP Q & A 305: What must the supplemental search fee be accompanied by in addition to the payment?

    Question: What must the supplemental search fee be accompanied by in addition to the payment? Answer: As shown in chapter 1800 … The supplemental search fee must be paid and be accompanied by: * a protest and * a request for refund of the supplemental search fee. Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers Patent Cooperation Treaty. 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 1827.01 of the MPEP.  The following is a brief summary of section 1827.01. 1827.01 Refund of International Application Fees The search fee will be refunded if no international filing date is accorded or if the application is withdrawn before the search copy is transmitted to the International Searching Authority. The transmittal fee will not be refunded. The handling fee will be refunded if the Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau. Refund of the supplemental search fee will be made if the applicant is successful in a protest to a holding of lack of unity of invention.

    2 min

  8. 18 JUN

    MPEP Q & A 304: What does routine discovery include?

    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.

    3 min
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About

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.

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