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Patent Bar MPEP Q & A Podcast

Lisa Parmley, USPTO Patent Practitioner #51006

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Patent Bar MPEP Q & A Podcast

Patent Bar MPEP Q & A Podcast

Lisa Parmley, USPTO Patent Practitioner #51006

2
Followers
1
Plays
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MPEP Q & A 189: Issuance of NIRC Action in Inter Partes Reexamination Proceeding

Question: Name one instance when issuance of a NIRC action would be proper in an inter partes reexamination proceeding. Answer: The following are the only instances when issuance of a NIRC action would be proper in an inter partes reexamination proceeding: * There is no timely response by the patent owner to an Office action requiring a response. If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). All claims will be canceled by formal examiner’s amendment. * After a Right of Appeal Notice (RAN) where no party to the reexamination timely files a notice of appeal. * After filing of a notice of appeal, where all parties who filed a notice of appeal or notice of cross appeal fail to timely file an appellant brief (or fail to timely complete the brief, where the appellant brief is noted by the examiner as being incomplete). * After a final decision by the Board, where there is no further timely appeal to the Court of Appeals for the Federal Circuit nor is there a timely request for rehearing by the Board. * After the Federal Court appeal process has been completed and the case is returned to the examiner. Chapter Details: The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers OptionalInter PartesReexamination. The answer is from the 9th Edition, Revision 08.2017. 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 2687 of the MPEP. The following is a brief summary of this section: 2687 Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding Upon conclusion of the inter partes reexamination proceeding, the examiner must complete a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). If appropriate, an examiner’s amendment will also be prepared. Where the claims are found patentable, reasons must be given for each claim found patentable. This section covers further details on the NIRC such as instances where a NIRC would be appropriate, preparation of the NIRC action, examiner’s amendment to place the proceeding in condition for notice of intent to issue an inter partes reexamination certificate, reasons for patentability and/or confirmation, preparation of the case for publication, and reexamination proceedings in which all the claims are canceled.

4 MIN1 w ago
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MPEP Q & A 189: Issuance of NIRC Action in Inter Partes Reexamination Proceeding

MPEP Q & A 188: What Should Applicant Initiated Interview Request Form Identify?

Question: What should the Applicant Initiated Interview Request form identify? Answer: The Applicant Initiated Interview Request form should identify: * the participants of the interview * the proposed date of the interview * whether the interview will be personal, telephonic, or video conference * and should include a brief description of the issues to be discussed. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP. This chapter covers Representative of Inventor or Owner. The answer is from the 9th Edition, Revision 08.2017. 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 408 of the MPEP. The following is a brief summary of this section: 408 Interviews With Patent Practitioner of Record When an applicant is initiating a request for an interview, an “Applicant Initiated Interview Request” form should be submit...

2 MIN3 w ago
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MPEP Q & A 188: What Should Applicant Initiated Interview Request Form Identify?

MPEP Q & A 187: Two Final Rules Dealing with Claim Construction Standard

Question: What are the two final rules dealing with the claim construction standard as implemented in the supplement entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”? Answer: In the first final rule, the Office changed the existing rules to, among other things: * Increase the page limit for patent owner’s motion to amend by ten pages and allow a claims appendix to be filed with the motion; and * increase the page limit for petitioner’s reply to patent owner’s response by ten pages. In the second final rule, the Office changed the existing rules to, among other things: * Allow new testimonial evidence to be submitted with a patent owner’s preliminary response; * allow a claim construction approach that emulates the approach used by a district court for claims of patents that will expire before entry of a final written decision; * replace page limits with word count limits for major briefi...

4 MIN2019 DEC 10
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MPEP Q & A 187: Two Final Rules Dealing with Claim Construction Standard

MPEP Q & A 186: Name Types of Patents that May Not Use 37 C.F.R. 1.114

Question: Name two types of patents that may not use the provisions of 37 C.F.R. 1.114. Answer: The provisions of 37 C.F.R. 1.114 do not apply to the following types of patents: * design patent applications * provisional applications * applications filed before June 8, 1995 * international applications filed before June 8, 1995 * an international design application * reexamination patents 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 08.2017. 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 706.07(h) of the MPEP. The following is a brief summary of this section: 706.07(h) Request for Continued Examination (RCE) Practice Filing a request for continued examination (RCE) provides a means for the applicant to continue w...

3 MIN2019 NOV 26
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MPEP Q & A 186: Name Types of Patents that May Not Use 37 C.F.R. 1.114

MPEP Q & A 185: What Must an Application Filed Under 37 CFR 1.53(d) be Filed Before the Earliest Of?

Question: What must an application filed under 37 CFR 1.53(d) be filed before the earliest of? Answer: An application filed under 37 CFR 1.53(d) must be filed before the earliest of: * (A) payment of the issue fee on the prior application, unless a petition is granted in the prior application; * (B) abandonment of the prior application; or * (C) termination of proceedings on the prior application. 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 08.2017. 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 506 of the MPEP. The following is a brief summary of this section: 506 Completeness of Original Application This section covers the completeness of the original application including both nonprovisional and p...

3 MIN2019 NOV 12
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MPEP Q & A 185: What Must an Application Filed Under 37 CFR 1.53(d) be Filed Before the Earliest Of?

MPEP Q & A 184: What Should a Subject Matter Eligibility Rejection Identify Under Step 2A?

Question: A subject matter eligibility rejection under Step 2 should provide an explanation for each part of the Step 2 analysis; Step 2A and Step 2B. What specifically should a rejection identify under Step 2A? Answer: For Step 2A, the rejection should identify the judicial exception by referring towhat is recited(i.e.,set forth or described) in the claim andexplain whyit is considered an exception. * For example, if the claim is directed to anabstract idea, the rejection should identify the abstract idea as it is recited (i.e.,set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea. * Similarly, if the claim is directed to alaw of natureor anatural phenomenon, the rejection should identify the law of nature or natural phenomenon as it is recited (i.e.,set forth or described) in the claim and explain using a reasoned rationale why it is considered a law of nature or natural phenomenon. Chapter Details: The...

4 MIN2019 OCT 29
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MPEP Q & A 184: What Should a Subject Matter Eligibility Rejection Identify Under Step 2A?

MPEP Q & A 183: When Changes to the Claim Construction Standard Apply

Question: When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”apply? Answer: As shown in the supplement … The changes to the claim construction standard will apply to proceedings where a petition is filed on or after the effective date of the final rule (November 13, 2018). * The Office will apply the federal court claim construction standard, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), which is articulated in Phillips, to construe patent claims and proposed substitute claims in AIA proceedings in which trial has not yet been instituted before the effective date of the final rule. * The Office will continue to apply the BRI standard for construing unexpired patent claims and proposed substitute claims in AIA proceedings where a petition was filed ...

4 MIN2019 OCT 15
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MPEP Q & A 183: When Changes to the Claim Construction Standard Apply

MPEP Q & A 182: Characteristics of Ex Parte Reexamination

Question: List one of the basic characteristics of ex parte reexamination. Answer: The basic characteristics of ex parte reexamination are as follows: * Anyone can request reexamination at any time during the period of enforceability of the patent; * In ex parte reexaminations, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103. Patents may also be applied in a double patenting rejection; * A substantial new question of patentability must be present for reexamination to be ordered; * If ordered, the actual reexamination proceeding is ex parte in nature; * Decision on a request for reexamination submitted under 35 U.S.C. 302 must be made no later than 3 months from its filing, and the remainder of the proceeding must proceed with “special dispatch” within the Office; * If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of a re...

4 MIN2019 OCT 1
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MPEP Q & A 182: Characteristics of Ex Parte Reexamination

MPEP Q & A 181: Summary of Claim Construction Standard

Question: What is the executive summary of the final rule when dealing with the claim construction standard that took effect on November 13, 2018? Answer: This final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-Smith America Invents Act (‘‘AIA’’) providing for trials before the Office, by replacing the BRI (broadest reasonable interpretation) standard for interpreting unexpired patent claims and substitute claims proposed in a motion to amend with the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b). The rule adopts the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp. and its progeny. Under the final rule, the PTAB will apply in an AIA proceeding the same standard applied in federal courts to construe patent claims. This final rule also amends the rules to add a new provision which states...

4 MIN2019 SEP 17
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MPEP Q & A 181: Summary of Claim Construction Standard

MPEP Q & A 180: AIA 35 U.S.C. 102(b)

Question: What does AIA 35 U.S.C. 102(b) discuss? Answer: AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a). 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 08.2017. 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 2152 of the MPEP. The following is a brief summary of section 2152. 2152 Detailed Discussion of AIA 35 U.S.C. 102(a) and (b) This MPEP section isonly applicableto applications subject to examination under the first inventor to file (FITF) provisions of the AIA. This section provides explicit details on AIA 35 U.S.C. 102(a) and (b). It includes a definition of each along with similarities and differences to pre-AIA 35 U.S.C. 102(a), (b), and (e).

2 MIN2019 SEP 3
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MPEP Q & A 180: AIA 35 U.S.C. 102(b)

Latest Episodes

MPEP Q & A 189: Issuance of NIRC Action in Inter Partes Reexamination Proceeding

Question: Name one instance when issuance of a NIRC action would be proper in an inter partes reexamination proceeding. Answer: The following are the only instances when issuance of a NIRC action would be proper in an inter partes reexamination proceeding: * There is no timely response by the patent owner to an Office action requiring a response. If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). All claims will be canceled by formal examiner’s amendment. * After a Right of Appeal Notice (RAN) where no party to the reexamination timely files a notice of appeal. * After filing of a notice of appeal, where all parties who filed a notice of appeal or notice of cross appeal fail to timely file an appellant brief (or fail to timely complete the brief, where the appellant brief is noted by the examiner as being incomplete). * After a final decision by the Board, where there is no further timely appeal to the Court of Appeals for the Federal Circuit nor is there a timely request for rehearing by the Board. * After the Federal Court appeal process has been completed and the case is returned to the examiner. Chapter Details: The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers OptionalInter PartesReexamination. The answer is from the 9th Edition, Revision 08.2017. 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 2687 of the MPEP. The following is a brief summary of this section: 2687 Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding Upon conclusion of the inter partes reexamination proceeding, the examiner must complete a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). If appropriate, an examiner’s amendment will also be prepared. Where the claims are found patentable, reasons must be given for each claim found patentable. This section covers further details on the NIRC such as instances where a NIRC would be appropriate, preparation of the NIRC action, examiner’s amendment to place the proceeding in condition for notice of intent to issue an inter partes reexamination certificate, reasons for patentability and/or confirmation, preparation of the case for publication, and reexamination proceedings in which all the claims are canceled.

4 MIN1 w ago
Comments
MPEP Q & A 189: Issuance of NIRC Action in Inter Partes Reexamination Proceeding

MPEP Q & A 188: What Should Applicant Initiated Interview Request Form Identify?

Question: What should the Applicant Initiated Interview Request form identify? Answer: The Applicant Initiated Interview Request form should identify: * the participants of the interview * the proposed date of the interview * whether the interview will be personal, telephonic, or video conference * and should include a brief description of the issues to be discussed. Chapter Details: The answer to this question can be found in chapter 400 of the MPEP. This chapter covers Representative of Inventor or Owner. The answer is from the 9th Edition, Revision 08.2017. 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 408 of the MPEP. The following is a brief summary of this section: 408 Interviews With Patent Practitioner of Record When an applicant is initiating a request for an interview, an “Applicant Initiated Interview Request” form should be submit...

2 MIN3 w ago
Comments
MPEP Q & A 188: What Should Applicant Initiated Interview Request Form Identify?

MPEP Q & A 187: Two Final Rules Dealing with Claim Construction Standard

Question: What are the two final rules dealing with the claim construction standard as implemented in the supplement entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”? Answer: In the first final rule, the Office changed the existing rules to, among other things: * Increase the page limit for patent owner’s motion to amend by ten pages and allow a claims appendix to be filed with the motion; and * increase the page limit for petitioner’s reply to patent owner’s response by ten pages. In the second final rule, the Office changed the existing rules to, among other things: * Allow new testimonial evidence to be submitted with a patent owner’s preliminary response; * allow a claim construction approach that emulates the approach used by a district court for claims of patents that will expire before entry of a final written decision; * replace page limits with word count limits for major briefi...

4 MIN2019 DEC 10
Comments
MPEP Q & A 187: Two Final Rules Dealing with Claim Construction Standard

MPEP Q & A 186: Name Types of Patents that May Not Use 37 C.F.R. 1.114

Question: Name two types of patents that may not use the provisions of 37 C.F.R. 1.114. Answer: The provisions of 37 C.F.R. 1.114 do not apply to the following types of patents: * design patent applications * provisional applications * applications filed before June 8, 1995 * international applications filed before June 8, 1995 * an international design application * reexamination patents 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 08.2017. 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 706.07(h) of the MPEP. The following is a brief summary of this section: 706.07(h) Request for Continued Examination (RCE) Practice Filing a request for continued examination (RCE) provides a means for the applicant to continue w...

3 MIN2019 NOV 26
Comments
MPEP Q & A 186: Name Types of Patents that May Not Use 37 C.F.R. 1.114

MPEP Q & A 185: What Must an Application Filed Under 37 CFR 1.53(d) be Filed Before the Earliest Of?

Question: What must an application filed under 37 CFR 1.53(d) be filed before the earliest of? Answer: An application filed under 37 CFR 1.53(d) must be filed before the earliest of: * (A) payment of the issue fee on the prior application, unless a petition is granted in the prior application; * (B) abandonment of the prior application; or * (C) termination of proceedings on the prior application. 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 08.2017. 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 506 of the MPEP. The following is a brief summary of this section: 506 Completeness of Original Application This section covers the completeness of the original application including both nonprovisional and p...

3 MIN2019 NOV 12
Comments
MPEP Q & A 185: What Must an Application Filed Under 37 CFR 1.53(d) be Filed Before the Earliest Of?

MPEP Q & A 184: What Should a Subject Matter Eligibility Rejection Identify Under Step 2A?

Question: A subject matter eligibility rejection under Step 2 should provide an explanation for each part of the Step 2 analysis; Step 2A and Step 2B. What specifically should a rejection identify under Step 2A? Answer: For Step 2A, the rejection should identify the judicial exception by referring towhat is recited(i.e.,set forth or described) in the claim andexplain whyit is considered an exception. * For example, if the claim is directed to anabstract idea, the rejection should identify the abstract idea as it is recited (i.e.,set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea. * Similarly, if the claim is directed to alaw of natureor anatural phenomenon, the rejection should identify the law of nature or natural phenomenon as it is recited (i.e.,set forth or described) in the claim and explain using a reasoned rationale why it is considered a law of nature or natural phenomenon. Chapter Details: The...

4 MIN2019 OCT 29
Comments
MPEP Q & A 184: What Should a Subject Matter Eligibility Rejection Identify Under Step 2A?

MPEP Q & A 183: When Changes to the Claim Construction Standard Apply

Question: When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”apply? Answer: As shown in the supplement … The changes to the claim construction standard will apply to proceedings where a petition is filed on or after the effective date of the final rule (November 13, 2018). * The Office will apply the federal court claim construction standard, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), which is articulated in Phillips, to construe patent claims and proposed substitute claims in AIA proceedings in which trial has not yet been instituted before the effective date of the final rule. * The Office will continue to apply the BRI standard for construing unexpired patent claims and proposed substitute claims in AIA proceedings where a petition was filed ...

4 MIN2019 OCT 15
Comments
MPEP Q & A 183: When Changes to the Claim Construction Standard Apply

MPEP Q & A 182: Characteristics of Ex Parte Reexamination

Question: List one of the basic characteristics of ex parte reexamination. Answer: The basic characteristics of ex parte reexamination are as follows: * Anyone can request reexamination at any time during the period of enforceability of the patent; * In ex parte reexaminations, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103. Patents may also be applied in a double patenting rejection; * A substantial new question of patentability must be present for reexamination to be ordered; * If ordered, the actual reexamination proceeding is ex parte in nature; * Decision on a request for reexamination submitted under 35 U.S.C. 302 must be made no later than 3 months from its filing, and the remainder of the proceeding must proceed with “special dispatch” within the Office; * If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of a re...

4 MIN2019 OCT 1
Comments
MPEP Q & A 182: Characteristics of Ex Parte Reexamination

MPEP Q & A 181: Summary of Claim Construction Standard

Question: What is the executive summary of the final rule when dealing with the claim construction standard that took effect on November 13, 2018? Answer: This final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-Smith America Invents Act (‘‘AIA’’) providing for trials before the Office, by replacing the BRI (broadest reasonable interpretation) standard for interpreting unexpired patent claims and substitute claims proposed in a motion to amend with the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b). The rule adopts the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp. and its progeny. Under the final rule, the PTAB will apply in an AIA proceeding the same standard applied in federal courts to construe patent claims. This final rule also amends the rules to add a new provision which states...

4 MIN2019 SEP 17
Comments
MPEP Q & A 181: Summary of Claim Construction Standard

MPEP Q & A 180: AIA 35 U.S.C. 102(b)

Question: What does AIA 35 U.S.C. 102(b) discuss? Answer: AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a). 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 08.2017. 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 2152 of the MPEP. The following is a brief summary of section 2152. 2152 Detailed Discussion of AIA 35 U.S.C. 102(a) and (b) This MPEP section isonly applicableto applications subject to examination under the first inventor to file (FITF) provisions of the AIA. This section provides explicit details on AIA 35 U.S.C. 102(a) and (b). It includes a definition of each along with similarities and differences to pre-AIA 35 U.S.C. 102(a), (b), and (e).

2 MIN2019 SEP 3
Comments
MPEP Q & A 180: AIA 35 U.S.C. 102(b)
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