MPEP Q & A 323: Can distinct subject matter be recovered by filing a reissue application in specific cases?

Patent Bar MPEP Q & A Podcast

#Questions And Answers #Lisa Parmley, USPTO Patent Practitioner #51006 #Lisa Parmley #USPTO Patent Practitioner #51006 #Law #News #Politics #Business #Business Disciplines #Podcasting Education

22:49

Jonathan Jones is an NFL cornerback for the Washington Commanders who rose from the undrafted ranks to become two-time Super Bowl champion with the New England Patriots, a businessman, philanthropist, and licensed pilot. In 2019, Jonathan founded the Jonathan Jones Next Step Foundation in 2019, a platform dedicated to empowering youth through education, professional development, and mentorship. The foundation works to alleviate food insecurity, promote women in stem and sports, and to promote professional development in the communities where he lives. Jay and Jonathan talk about investing in the communities they live in, acknowledging the people who helped you become the person you are, and paying that same investment forward to the next generation. Episode Chapters 0:00 intro 1:24 Building local connections 4:25 Jonathan’s mentors and mentees 10:54 Jonathan’s pride in his mentees’ successes 13:04 how Jonathan chooses his causes 14:08 Jonathan’s support for girls and young women 17:19: Jonathan’s passion for flying 19:40 The Next Step Foundation 20:29 Goodbye For video episodes, watch on www.youtube.com/@therudermanfamilyfoundation Stay in touch: X: @JayRuderman | @RudermanFdn LinkedIn: Jay Ruderman | Ruderman Family Foundation Instagram: All About Change Podcast | Ruderman Family Foundation To learn more about the podcast, visit https://allaboutchangepodcast.com/ Looking for more insights into the world of activism? Be sure to check out Jay’s brand new book, Find Your Fight , in which Jay teaches the next generation of activists and advocates how to step up and bring about lasting change. You can find Find Your Fight wherever you buy your books, and you can learn more about it at www.jayruderman.com .…

about a year ago 3:19

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Question: Where a restriction (including an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, can the non-elected invention(s) and non-claimed, distinct subject matter be […]

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310 episodes

Patent Bar MPEP Q & A Podcast

MPEP Q & A 323: Can distinct subject matter be recovered by filing a reissue application in specific cases?

Patent Bar MPEP Q & A Podcast

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published about a year ago

MP3•Episode home

The post MPEP Q & A 323: Can distinct subject matter be recovered by filing a reissue application in specific cases? appeared first on Patent Education Series.

310 episodes

#Questions And Answers #Lisa Parmley, USPTO Patent Practitioner #51006 #Lisa Parmley #USPTO Patent Practitioner #51006 #Law #News #Politics #Business #Business Disciplines #Podcasting Education

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Patent Bar MPEP Q & A Podcast

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MPEP Q & A 326: Applications that count for “gross income” basis micro entity status. 2:44

8 days ago2:44

2:44

Question: What applications count for the filing limits for the purposes of establishing micro entity status under the “gross income” basis? Answer: For purposes of establishing micro entity status under the “gross income” basis, the application filing limit includes: (i) previously filed U.S. nonprovisional applications (e.g., utility, design, plant, continuation, and divisional applications), (ii) previously filed […] The post MPEP Q & A 326: Applications that count for “gross income” basis micro entity status. appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 325: List the pieces of information that should be placed on the first page of a protest. 2:53

22 days ago2:53

2:53

Question: List two pieces of information that should be placed on the first page of a protest. Answer: Each protest should be clearly identified as a “PROTEST UNDER 37 CFR 1.291.” It is also important that any protest against a pending application specifically identify the application to which the protest is directed with the identification being […] The post MPEP Q & A 325: List the pieces of information that should be placed on the first page of a protest. appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 324: Name items that must be submitted when adding a “Sequence Listing” after the application filing date. 3:01

5 weeks ago3:01

3:01

Question: Name at least two items that must be submitted when adding a “Sequence Listing” after the application filing date. Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: (1) a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text […] The post MPEP Q & A 324: Name items that must be submitted when adding a “Sequence Listing” after the application filing date. appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 323: Can distinct subject matter be recovered by filing a reissue application in specific cases? 3:19

7 weeks ago3:19

3:19

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 322: What type of Demand will prevent an international application designating the U.S. to enter? 2:26

9 weeks ago2:26

2:26

Question: What type of Demand will prevent an international application designating the U.S. to enter the national stage via the U.S. Designated Office? Answer: An international application designating the U.S. will enter the national stage via the U.S. Designated Office unless a Demand electing the U.S. is filed under PCT Article 31 whereupon entry will be via […] The post MPEP Q & A 322: What type of Demand will prevent an international application designating the U.S. to enter? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 321: What are the factual inquiries related to obviousness? 3:41

11 weeks ago3:41

3:41

Question: What are the factual inquiries related to obviousness that the Court enunciates? 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 […] The post MPEP Q & A 321: What are the factual inquiries related to obviousness? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 320: What are the three types of designs interpreted by case law to include? 2:22

13 weeks ago2:22

2:22

Question: What are the three types of designs the language “new, original and ornamental design for an article of manufacture” has been interpreted by the case law to include? Answer: The language “new, original and ornamental design for an article of manufacture” has been interpreted by the case law to include at least three kinds of designs: […] The post MPEP Q & A 320: What are the three types of designs interpreted by case law to include? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 319: What must any assignment-related document for patent matters submitted by facsimile include? 2:11

15 weeks ago2:11

2:11

Question: What three items must any assignment-related document for patent matters submitted by facsimile include? Answer: Any assignment-related document for patent matters submitted by facsimile must include: (A) an identified application or patent number; (B) one cover sheet to record a single transaction; and (C) payment of the recordation fee by a credit card, is […] The post MPEP Q & A 319: What must any assignment-related document for patent matters submitted by facsimile include? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 318: Requirements of an oath or declaration under section 37 CFR 1.63. 2:39

17 weeks ago2:39

2:39

Question: Name two requirements of an oath or declaration under section 37 CFR 1.63? Answer: An oath or declaration under section 37 CFR 1.63 must: (1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name; (2) Identify the application to which it is directed; (3) Include a […] The post MPEP Q & A 318: Requirements of an oath or declaration under section 37 CFR 1.63. appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 317: How can you determine whether the original patent requirement is satisfied in a reissue application? 3:02

19 weeks ago3:02

3:02

Question: How can you determine whether the original patent requirement is satisfied in a reissue application? Answer: Examiners should review the reissue application to determine whether the original patent requirement is satisfied, by considering if: (A) the claims presented in the reissue application are described in the original patent specification and enabled by the original […] The post MPEP Q & A 317: How can you determine whether the original patent requirement is satisfied in a reissue application? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 316: Is it ever necessary to change the inventorship named in the application? 3:52

21 weeks ago3:52

3:52

Question: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, is it ever necessary to change the inventorship named in the application? Answer: If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, it may become necessary to […] The post MPEP Q & A 316: Is it ever necessary to change the inventorship named in the application? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 315: List examples of situations that confirm a “real world” context of use. 3:11

23 weeks ago3:11

3:11

Question: List two examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use and, therefore, do not define “substantial utilities.” Answer: The following are examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” […] The post MPEP Q & A 315: List examples of situations that confirm a “real world” context of use. appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 314: What will the request indicate for each patent and printed publication cited in the request? 3:30

25 weeks ago3:30

3:30

Question: When an examiner concludes that no substantial new question of patentability has been raised, they will prepare a decision denying the reexamination request. What will that request indicate for each patent and printed publication cited in the request? Answer: If the examiner concludes that no substantial new question of patentability has been raised, the […] The post MPEP Q & A 314: What will the request indicate for each patent and printed publication cited in the request? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 313: Reasons why the Office will withdraw the application from issue. 2:19

27 weeks ago2:19

2:19

Question: Once the issue fee has been paid, list two reasons why the Office will withdraw the application from issue at its own initiative. Answer: Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except: (1) A mistake on the part […] The post MPEP Q & A 313: Reasons why the Office will withdraw the application from issue. appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 312: List two General Plastic non-exclusive factors. 3:18

29 weeks ago3:18

3:18

Question: List two General Plastic non-exclusive factors. Answer: The General Plastic non-exclusive factors include the following: Whether the same petitioner previously filed a petition directed to the same claims of the same patent; Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition […] The post MPEP Q & A 312: List two General Plastic non-exclusive factors. appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 311: Two requirements for a petition for suspension of action under 37 CFR 1.103(a) 3:23

31 weeks ago3:23

3:23

Question: List two requirements for a petition for suspension of action under 37 CFR 1.103(a). Answer: A petition for suspension of action under 37 CFR 1.103(a) must: (A) be presented as a separate paper; (B) be accompanied by the petition fee set forth in 37 CFR 1.17(g); (C) request a specific and reasonable period of suspension not greater than […] The post MPEP Q & A 311: Two requirements for a petition for suspension of action under 37 CFR 1.103(a) appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 310: List two examples of notices issued as part of the pre-examination processing of an application 3:29

33 weeks ago3:29

3:29

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 processing of an application (except a Notice of Omitted Items in a Nonprovisional Application as discussed above). List two examples of these notices. Answer: These notices include: A Notice of Incomplete Nonprovisional Application (except as to […] The post MPEP Q & A 310: List two examples of notices issued as part of the pre-examination processing of an application appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 309: List two requirements for adding a “Sequence Listing” after the application filing date? 3:15

35 weeks ago3:15

3:15

Question: List two requirements for adding a “Sequence Listing” after the application filing date? Answer: Adding a “Sequence Listing” after the application filing date involves the submission of: a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text file submitted via the USPTO patent electronic […] The post MPEP Q & A 309: List two requirements for adding a “Sequence Listing” after the application filing date? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 308: What type of arguments should a patent owner preliminary response include? 3:35

37 weeks ago3:35

3:35

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; The prior art […] The post MPEP Q & A 308: What type of arguments should a patent owner preliminary response include? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 307: When are electronic means or medium for filing IDSs permitted? 2:55

39 weeks ago2:55

2:55

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 PDF […] The post MPEP Q & A 307: When are electronic means or medium for filing IDSs permitted? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 306: Sealed confidential information prior to the institution of the trial by which options? 3:05

41 weeks ago3:05

3:05

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 post MPEP Q & A 306: Sealed confidential information prior to the institution of the trial by which options? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 305: What must the supplemental search fee be accompanied by in addition to the payment? 2:29

43 weeks ago2:29

2:29

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 […] The post MPEP Q & A 305: What must the supplemental search fee be accompanied by in addition to the payment? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 304: What does routine discovery include? 3:03

45 weeks ago3:03

3:03

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 and streamlines the proceeding. Board […] The post MPEP Q & A 304: What does routine discovery include? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 303: What should a certificate of correction filed via the patent electronic filing system use as the document description? 2:15

47 weeks ago2:15

2:15

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 this question can […] The post MPEP Q & A 303: What should a certificate of correction filed via the patent electronic filing system use as the document description? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 302: Major differences between 35 U.S.C. 102(c) and the CREATE Act 3:30

49 weeks ago3:30

3:30

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 invention […] The post MPEP Q & A 302: Major differences between 35 U.S.C. 102(c) and the CREATE Act appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 301: What does the prohibition on ex parte communications not extend to? 3:19

51 weeks ago3:19

3:19

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 as otherwise authorized. The prohibition […] The post MPEP Q & A 301: What does the prohibition on ex parte communications not extend to? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 300: Difference between sequence listing requirements filed before or after July 1, 2022 3:55

1 year ago3:55

3:55

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 […] The post MPEP Q & A 300: Difference between sequence listing requirements filed before or after July 1, 2022 appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 299: What should a motion to exclude evidence include? 3:23

1 year ago3:23

3:23

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) […] The post MPEP Q & A 299: What should a motion to exclude evidence include? appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

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MPEP Q & A 298: Submission requirements for “Sequence Listing XML” 3:09

1 year ago3:09

3:09

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 […] The post MPEP Q & A 298: Submission requirements for “Sequence Listing XML” appeared first on Patent Education Series .…

Patent Bar MPEP Q & A Podcast

1
MPEP Q & A 297: List two situations where a certificate of correction may not be appropriate. 3:37

1 year ago3:37