261 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

    • Education
    • 4.0 • 9 Ratings

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 264: How do examiners evaluate integration into a practical application?

    MPEP Q & A 264: How do examiners evaluate integration into a practical application?

    Question:

    How do examiners evaluate integration into a practical application?

    Answer:

    Examiners evaluate integration into a practical application by:



    * (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and

    * (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.



    Many of these considerations overlap, and often more than one consideration is relevant to analysis of an additional element.

    Chapter Details:

    The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

    The answer is from the 9th Edition, Revision 10.2019. 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 come from section 2106.04(d) of the MPEP.  The following is a brief summary of section 2106.04(d).

    2106.04(d)    Integration of a Judicial Exception Into A Practical Application

    The Supreme Court has long distinguished between principles themselves (which are not patent eligible) and the integration of those principles into practical applications (which are patent eligible).

    Similarly, in a growing body of decisions, the Federal Circuit has distinguished between claims that are ‘‘directed to’’ a judicial exception (which require further analysis to determine their eligibility) and those that are not (which are therefore patent eligible), e.g., claims that improve the functioning of a computer or other technology or technological field.

    • 3 min
    MPEP Q & A 263: How is the markedly different characteristics analysis performed?

    MPEP Q & A 263: How is the markedly different characteristics analysis performed?

    Question:

    How is the markedly different characteristics analysis performed?

    Answer:

    The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state.



    * Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties, and are evaluated based on what is recited in the claim on a case-by-case basis.

    * If the analysis indicates that a nature-based product limitation does not exhibit markedly different characteristics, then that limitation is a product of nature exception.

    * If the analysis indicates that a nature-based product limitation does have markedly different characteristics, then that limitation is not a product of nature exception.



    Chapter Details:

    The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

    The answer is from the 9th Edition, Revision 10.2019. 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 come from section 2106.04(c) of the MPEP.  The following is a brief summary of section 2106.04(c).

    2106.04(c)    The Markedly Different Characteristics Analysis

    The markedly different characteristics analysis is part of Step 2A Prong One, because the courts use this analysis to identify product of nature exceptions. For example, Chakrabarty relied on a comparison of the claimed bacterium to naturally occurring bacteria when determining that the claimed bacterium was not a product of nature because it had “markedly different characteristics from any found in nature”. Similarly, Roslin relied on a comparison of the claimed sheep to naturally occurring sheep when determining that the claimed sheep was a product of nature because it “does not possess ‘markedly different characteristics from any [farm animals] found in nature.’” 

    This section sets forth guidelines for performing the markedly different characteristics analysis, including information on when to perform the analysis, and how to perform the analysis.

    • 3 min
    MPEP Q & A 262: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind.

    MPEP Q & A 262: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind.

    Question:

    Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind.

    Answer:

    Examples of claims that do not recite mental processes because they cannot be practically performed in the human mind include:



    * a claim to a method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals, where the claimed GPS receiver calculated pseudoranges that estimated the distance from the GPS receiver to a plurality of satellites, SiRF Tech;

    * a claim to detecting suspicious activity by using network monitors and analyzing network packets, SRI Int’l;

    * a claim to a specific data encryption method for computer communication involving a several-step manipulation of data, Synopsys; and

    * a claim to a method for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask, where the method required the manipulation of computer data structures (eg. the pixels of a digital image and a two-dimensional array known as a mask) and the output of a modified computer data structure (a halftoned digital image), Research Corp. Techs.



    Chapter Details:

    The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

    The answer is from the 9th Edition, Revision 10.2019. 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 come from section 2106.04(a)(2) of the MPEP.  The following is a brief summary of section 2106.04(a)(2).

    2106.04(a)(2)    Abstract Idea Groupings

    This section covers examples of concepts the courts have identified as abstract ideas.

    • 3 min
    MPEP Q & A 261: What is meant by a fundamental economic practice or principle?

    MPEP Q & A 261: What is meant by a fundamental economic practice or principle?

    Question:

    What is meant by a fundamental economic practice or principle?

    Answer:

    The courts have used the phrases “fundamental economic practices” or “fundamental economic principles” to describe concepts relating to the economy and commerce.



    * Fundamental economic principles or practices include hedging, insurance, and mitigating risks.



    The term “fundamental” is not used in the sense of necessarily being “old” or “well-known.”



    * However, being old or well-known may indicate that the practice is fundamental.



    Chapter Details:

    The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

    The answer is from the 9th Edition, Revision 10.2019. 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 come from section 2106.04(a)(2) of the MPEP.  The following is a brief summary of section 2106.04(a)(2).

    2106.04(a)(2)    Abstract Idea Groupings

    This section covers examples of concepts the courts have identified as abstract ideas.

    • 2 min
    MPEP Q & A 257: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time?

    MPEP Q & A 257: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time?

    Question:

    Can an inventor apply for a patent jointly even when they did not physically work together or at the same time?

    Answer:

    The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. “Inventors may apply for a patent jointly even though:



    * they did not physically work together or at the same time,

    * each did not make the same type or amount of contribution, or

    * each did not make a contribution to the subject matter of every claim of the patent.”



    Chapter Details:

    The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

    The answer is from the 9th Edition, Revision 10.2019. 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 come from section 2109 of the MPEP.  The following is a brief summary of section 2109.

    2109    Inventorship

    This section covers the details of inventorship including a brief discussion on naming inventorship, and how an inventor must contribute to the conception of the invention. As long as the inventor maintains intellectual domination over making the invention, ideas, suggestions, and materials may be adopted from others.

    This section also briefly touches on how the inventor is not required to reduce the invention to practice. He or she merely could have supervised the reduction to practice. Lastly, this section outlines the requirements for joint inventorship. Inventors may apply for a patent jointly even if they did not physically work together or at the same time.

    • 3 min
    MPEP Q & A 256: What type of applications and proceedings may submit drawings that are not black and white line drawings via EFS-Web?

    MPEP Q & A 256: What type of applications and proceedings may submit drawings that are not black and white line drawings via EFS-Web?

    Question:

    What type of applications and proceedings may submit photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings via EFS-Web?

    Answer:

    Photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings may be submitted via EFS-Web in only the following types of applications and proceedings:



    * (1) Nonprovisional design patent applications, including reissue design patent applications;

    * (2) Provisional applications;

    * (3) Nonprovisional utility patent applications, including reissue utility patent applications;

    * (4) U.S. national stage applications;

    * (5) International design applications;

    * (6) Reexamination proceedings for utility or design patents;

    * (7) Supplemental examination proceedings.



    Chapter Details:

    The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and Handling of Mail and Papers.

    The answer is from the 9th Edition, Revision 10.2019. 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 come from section 502.05 of the MPEP.  The following is a brief summary of section 502.05.

    502.05   Correspondence Transmitted by EFS-Web

    This section covers correspondence submitted through the EFS-Web, which is the PTO’s electronic filing system. Included is a discussion on what types of documents may be submitted through EFS-Web, legal policies, acknowledgement receipts, pre-grant (18 month) publication requests, and policies on photographs and color drawings.

    • 3 min

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