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

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.

Question:

A “Sequence Listing XML” may be submitted as a XML file with a “.xml” extension via the USPTO patent electronic filing system or as read-only optical discs. What does such a submission require?

Answer:

Such submission requires that applicant provide a statement in a separate paragraph that incorporates by reference the material in the XML file identifying the name of the XML file, the date of creation, and the size of the XML file in bytes (except that an incorporation by reference statement is not required for a sequence listing properly submitted as an XML file in an international application during the international stage regardless of whether the application is currently in the international stage or the national stage).

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 of the MPEP.  The following is a brief summary of section 608.05.

608.05 Sequence Listing, Table, or Computer Program Listing Appendix Submitted in Electronic Form 37 C.F.R. 1.52

This section covers sequence listings, tables, or computer program listings. For instance, biotechnology sequence listings and computer listing appendices may be submitted as ASCII text files with a “.txt” extension (e.g., “seqlist.txt”).

Question:

List two exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate.

Answer:

Exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate:



* (A) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first inventor to file provisions of the AIA and where the 37 CFR 1.55/78statement is not present.

* (B) Correcting a claim to a prior application having a filing date before March 16, 2013 to a claim to a prior application having a filing date on or after March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first to invent provisions of pre-AIA law.

* (C) Correcting a claim to a prior application that would result in a later effective filing date for a claimed invention (even if it would not result in a change to the statutory framework under which the application was examined).

* (D) Correcting a claim to a prior application that would have the appearance of extending the patent term (even if it would not result in a later effective filing date for a claimed invention or a change to the statutory framework under which the application was examined).



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 1481 of the MPEP.  The following is a brief summary of section 1481.

1481 Certificates of Correction – Applicant’s Mistake

This section discusses Certificates of correction which were not the fault of the Office. It covers the two separate statutory requirements that must be made before a Certificate of correction for an applicant’s mistake may issue.

Question:

List the criteria for “Large Tables” that may be submitted in electronic form in ASCII plain text.

Answer:

“Large Tables” that may be submitted in electronic form in ASCII plain text are:



* any individual table that is more than 50 pages in length, or

* multiple tables, if the total number of pages of all the tables in an application exceeds 100 pages in length.



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(b) of the MPEP.  The following is a brief summary of section 608.05(b).

608.05(b) ASCII Plain Text Submissions of “Large Tables” and Treatment of Lengthy Tables in a Specification for Patents and Patent Application Publications

Under 37 CFR 1.58(c), several different methods for submitting “Large Tables” are set forth, including submitting ASCII plain text files on read-only optical disc(s) in the form of CD-ROM, CD-R, DVD-R, or DVD+R.  Applicant(s) may also submit “Large Tables” as ASCII plain text files via the USPTO patent electronic filing system.

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), and covered business method patents (CBM).

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.