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Patent Bar Review
Listen to Patent Bar MPEP Q & A Podcast, a Education podcast by Lisa Parmley, USPTO Patent Practitioner #51006. Stream 301 episodes in English, follow new audio stories, and play episodes online on Radio and Podcast.
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Question: When can claims be finally rejected in a first Office action for a new application? Answer: For a new application, claims may be f...
Question: List 3 fees that are reduced by 80 percent for micro entities. Answer: The fees which are reduced by 80 percent for micro entities...
Question: List 2 situations where RCE provisions do not apply. Answer: The RCE provisions do not apply to: (A) a provisional application; (B...
Question: What does application information include? Answer: Application information includes the title of the invention, the total number o...
Question: As of December 29. 2022, list 3 fees that are reduced by 60 percent for small entities? Answer: As of December 29. 2022, the follo...
Question: Give 3 examples of asexually propagated plants. Answer: Asexually propagated plants are those that are reproduced by means other t...
Question: What rule are design practitioners registered under and what can they practice in? Answer: Design patent practitioners are registe...
Question: When is a Sequence Listing XML required? Answer: When an application filed under 35 U.S.C. 111(a) having a filing date on or after...
Question: List two types of individuals that affidavits or declarations filed under 37 C.F.R. 1.131 to overcome a rejection under pre-AIA 35...
Question: How can an applicant overcome a statutory double patenting rejection? Answer: A terminal disclaimer cannot be filed to obviate a s...
Question: Can any further submission of prior art by the same real party in interest be considered after the filing of the protest? Answer:...
Question: When has a 35 U.S.C. 102 rejection over multiple references been held to be proper when the extra references are cited? Answer: No...
Question: What happens when the claim for foreign priority or the certified copy of the foreign application is filed after the date of payme...
Question: What are some non-limiting examples of claims that are not directed to any of the statutory categories? Answer: Non-limiting examp...
Question: When is information material to patentability according to the duty to disclose? Answer: Information is material to patentability...
Question: What are two of the requirements for an English language translation of a non-English language foreign application? Answer: If an...
Question: List three examples of the kinds of information, in addition to prior art documents, that can be relied on in a protest. Answer: T...
Question: When should relevant documentation submitted to a regulatory review body be submitted for the Office for review? Answer: Where rel...
Question: Under what circumstances will the international and search fees be refunded? Answer: The international and search fees will be ref...
Question: Which two types of assignee(s) may conduct either the prosecution of a national application for patent or a reexamination proceedi...
Question: If additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, is a supplementa...
Question: Is a provisional application that is relied upon for priority in a U.S. patent and is abandoned available through the Patent Cente...
Question: Does the new ground of rejection raised by the Board in an appeal reopen prosecution? Answer: The new ground of rejection raised b...
Question: Name two items the Technology Center will verify when a Request for Continuing Examination is initially processed. Answer: An RCE...
Question: What non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period? Answer: The foll...
Question: What are the reasons for insisting upon a restriction? Answer: Every requirement to restrict has two aspects: (A) the reasons (as...
Question: What information should also be submitted for each patent on which a maintenance fee or surcharge is paid? Answer: The following i...
Question: What applications count for the filing limits for the purposes of establishing micro entity status under the “gross income” basis?...
Question: List two pieces of information that should be placed on the first page of a protest. Answer: Each protest should be clearly identi...
Question: Name at least two items that must be submitted when adding a “Sequence Listing” after the application filing date. Answer: Adding...
Question: Where a restriction (including an election of species) requirement was made in an application and applicant permitted the elected...
Question: What type of Demand will prevent an international application designating the U.S. to enter the national stage via the U.S. Design...
Question: What are the factual inquiries related to obviousness that the Court enunciates? Answer: Obviousness is a question of law based on...
Question: What are the three types of designs the language “new, original and ornamental design for an article of manufacture” has been inte...
Question: What three items must any assignment-related document for patent matters submitted by facsimile include? Answer: Any assignment-re...
Question: Name two requirements of an oath or declaration under section 37 CFR 1.63? Answer: An oath or declaration under section 37 CFR 1.6...
Question: How can you determine whether the original patent requirement is satisfied in a reissue application? Answer: Examiners should revi...
Question: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, is it...
Question: List two examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real...
Question: When an examiner concludes that no substantial new question of patentability has been raised, they will prepare a decision denying...
Question: Once the issue fee has been paid, list two reasons why the Office will withdraw the application from issue at its own initiative....
Question: List two General Plastic non-exclusive factors. Answer: The General Plastic non-exclusive factors include the following: Whether t...
Question: List two requirements for a petition for suspension of action under 37 CFR 1.103(a). Answer: A petition for suspension of action u...
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 processi...
Question: List two requirements for adding a “Sequence Listing” after the application filing date? Answer: Adding a “Sequence Listing” after...
Question: What type of arguments should a patent owner preliminary response include? Answer: A patent owner preliminary response may include...
Question: When are electronic means or medium for filing IDSs permitted? Answer: As shown in chapter 600 … Electronic means or medium...
Question: Where a petitioner files a motion to seal with the petition that seeks entry of a protective order other than the default protecti...
Question: What must the supplemental search fee be accompanied by in addition to the payment? Answer: As shown in chapter 1800 … The s...
Question: What does routine discovery include? Answer: Routine discovery includes: Production of any exhibit cited in a paper or testimony;...
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Patent Bar MPEP Q & A Podcast is listed as a Education show. The show language is listed as English.
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