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; …

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 …

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 seek…

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. Thi…

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 a…

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 th…

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 invent…

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…

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…

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 ba…

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…

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 exami…

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 …

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 supp…

Question: What are the two aspects every requirement to restrict has? Answer: Every requirement to restrict has two aspects: the reasons (as distinguished from the mere statement of conclusion) why each invention as claimedis either independent or distinct from the other(s); and the reasons why there would be a serious search and/or examination bur…

Question: Who conducts derivation proceedings, inter partes reviews, and post-grant reviews? Answer: The Board is to conduct derivation proceedings, inter partes reviews, and post-grant reviews. Chapter Details: This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is…

Question: List two changes the Hague Agreement Article 16(1) provides for in the International Register by the International Bureau. Answer: Hague Agreement Article 16(1) provides for the recording of certain changes in the International Register by the International Bureau, including: a change in ownership of the international registration; a chan…

Question: When did the derivation rules go into effect? Answer: The derivation rules went into effect 18 months after AIA enactment (March 16, 2013). 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 thi…

Question: How should measurements be given within a patent application? Answer: In order to minimize the necessity in the future for converting dimensions given in the English system of measurements to the metric system of measurements when using printed patents as research and prior art search documents, all patent applicants should use the metric…

Question: List two situations that are not considered new grounds of rejection? Answer: Where the statutory basis for the rejection remains the same, and the evidence relied upon in support of the rejection remains the same, a change in the discussion of, or rationale in support of, the rejection does not necessarily constitute a new ground of reje…

Question: How may an examiner treat an amendment not fully responsive to a non-final Office action? Answer: An examiner may treat an amendment not fully responsive to a non-final Office action by: (A) accepting the amendment as an adequate reply to the non-final Office action to avoid abandonment under 35 U.S.C. 133 and 37 CFR1.135; (B) notifying t…

Question: When inconsistent information is given for an application data sheet, what submission will govern control according to 37 CFR 1.76(d)(1)? Answer: 37 CFR 1.76(d)(1) provides that the most recent submission will govern (control) with respect to inconsistencies as between the information provided in an application data sheet, a designation o…

Question: What are the factual inquiries of obviousness enunciated by the Court? Answer: Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows: (A) Determining the scope and content of the prior art; (B) Ascertaining the differences between the claimed invention and the …

Question: What do the provisions of 37 CFR 1.114, request for continued examination, not apply to? Answer: The provisions of 27 CFR 1.114, Request for continued examination, do not apply to: (1) A provisional application; (2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995; (3) An international applicat…

Question: When will a provisional application be given a filing date? Answer: A provisional application filed on or after December 18, 2013 will be given a filing date as of the date a specification, with or without claims, is received in the Office. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter …

Question: List at least 3 special cases (those which are advanced out of turn for examination). Answer: The following is a list of special cases (those which are advanced out of turn for examination): (A) Applications on inventions that are deemed of peculiar importance to some branch of the public service and when for that reason the head of some …

Question: Since CPA applications were eliminated for utility and plant applications, what should applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed consider filing? Answer: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated…

Question: What is the time for reply to a final rejection? Answer: The time for reply to a final rejection is as follows: (A) All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain a form paragraph advising applicant that if the first reply is filed within 2 months of the date of the final Office action, th…

Question: When does the revocation of a filing receipt license become effective? Answer: The revocation becomes effective on the date on which the notice is mailed. Chapter Details: The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing. The answer is from the …

Question: How can a maintenance fee and any necessary surcharge be made? Answer: The method of payment for the maintenance fee and any necessary surcharge shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order as provided in 37 CFR 1.23(a). If …

Question: What does a petition under 37 CFR 1.78(b) require? Answer: A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e)and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as …

Question: 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee up to 5 months after the end of the time period set to take action except during which circumstances? Answer: 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee asset forth in 37 CFR 1.17(a) up to 5 months after the…

Question: What are some examples of rationales that may support a conclusion of obviousness? Answer: Examples of rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable res…

Question: What actions should happen if an examiner discovers new matter in a substitute or additional drawing? Answer: If the examiner discovers new matter in a substitute or additional drawing, the drawing should not be entered and the examiner should describe the new matter that resulted in non-entry in the next Office action. A new drawing with…

Question: During what conditions would the complete file wrapper and contents of a patent application published in redacted form not be available? Answer: If an application was published in redacted form, the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)…

Question: Can a request for ex parte reexamination filed on or after January 16, 2018 be filed with a reduced filing fee? Answer: Yes, requests for ex parte reexamination filed on or after January 16, 2018 may be filed with a reduced filing fee. This reexamination filing option was created to make it financially less burdensome for requesters with …

Question: Name a limitation that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception. Answer: Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include: Adding the words “apply it” (or an…

Question: What are three pieces of information each patent listed in the Official Gazette may give? Answer: As to each patent listed in the Official Gazette, the following information may be given: (A) Patent number; (B) Title of the invention; (C) Name of inventor(s), city, and state or country of residence; (D) Assignee’s name, city, and state or…

Question: Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for? Answer: Once appellant has filed a notice of appeal, appellant also may request that prosecution be reopened for the following situations: In response to a new ground of rejection made in an examiner’s answer, appel…

Question: List two laboratory techniques the courts have recognized as well-understood, routine, conventional activities in the life science arts when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. Answer: The courts have recognized the following laboratory techniques a…

Question: If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, what should the examiner do? Answer: If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and …

Question: What are the four purposes 35 U.S.C. 101 has been interpreted as imposing? Answer: 35 U.S.C. 101 has been interpreted as imposing four purposes. First, 35 U.S.C. 101 limits an inventor to ONE patent for a claimed invention. If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims…

Question: Name one advantage a CPA has compared to a continuation or divisional application filed under 37 CFR 1.53(b). Answer: A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a fi…

Question: What is the second part of the Alice/Mayo test often referred to as? Answer: The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. An inventive concept “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. v. Merial LLC. Instead, …

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 determi…

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 propertie…

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…

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 “fu…

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 physi…

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 fol…