AIA 2013 Exam Flashcards
- Which of the following statements is true?
A Correspondence filed in the Patent Office which requires a person’s signature must always be an original, not a copy.
B An assignment is not recordable unless it conveys a full and complete interest in the patent.
C The legal representative of an inventor who is legally incapacitated may file a substitute statement in lieu of an oath or declaration.
D In a Continued Prosecution Application (CPA) amendments made during prosecution of the parent do not carry over into the CPA
E Copyright and mask work notices cannot be placed in a U.S. patent application.
Correct Answer(s):
C
Related MPEP Chapter(s):
MPEP 300 - Ownership and Assignment
MPEP 500 - Receipt and Handling of Mail and Papers
MPEP 600 - Parts, Form, and Content of Application
Answer Reasoning:(C) is correct. See 37 C.F.R. 1.43 and 1.64.
- An oath or declaration must:
A Identify each inventor by his or her legal name.
B Include the inventor’s nationality.
C Include the mailing address where the inventor customarily receives mail, and residential address if an inventor lives at a location different from where the inventor customarily receives mail.
D Acknowledge the inventor’s duty to disclose to the Patent Office information material to patentability.
E All of the above.
Your Choice:(E)
Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 600 - Parts, Form, and Content of Application
Answer Reasoning:(A) is correct. See 37 C.F.R. 1.63(a). Notice 1.63(b) says these items may be included in an Application Data Sheet and are, therefore, not mandatory in an oath or declaration.
- Oscar files a provisional patent application on April 1, 2012, in which he fully describes a single embodiment of his invention. Oscar then subsequently files a non-provisional patent application on March 16, 2013, which claims benefit to the earlier-filed provisional patent application. His non-provisional patent application contains more structural detail than does the provisional filing, but no additional embodiments. This new structural detail is deemed necessary to define over newly discovered prior art, and is contained in the claims. When is the latest that Oscar must notify the Patent Office that his non-provisional patent application contains matter not contained within his provisional patent application?
A Never. There is no obligation to notify the Patent Office that a non-provisional patent application contains claims with more structural detail than disclosed in a provisional patent application.
B March 16, 2013.
C April 1, 2013.
D July 16, 2013.
E August 1, 2013.
Correct Answer(s):
E
Related MPEP Chapter(s):
Answer Reasoning:(E) is correct. See Changes to Implement First Inventor to File, 78 FR 11024 at 11048 (Feb. 14, 2013).
Wyatt West, a resident of Australia, invented a new and improved surfboard while vacationing in Hawaii during January 2011. After returning from vacation, he decided to file an Australian patent application, which was accomplished on June 15, 2012. Wyatt also ran an advertisement in the Sydney Morning Herald offering to sell his surfboard on June 21, 2012, but no one responded. His friend Hailey Harper did take a few prototype surfboards with her to the U.S. surfing championships in Huntington Beach, California in July 2013. Despite Harper’s repeated offers for sale, which started July 20, 2013, no sales were made. West finally a U.S. application on July 31, 2013, which was identical in scope to his previous Australian application.
- In addition to the facts set forth above, the examiner is a graduate of the University of California in Irvine, where she was a good friend of Edward Landers, known locally as the “Sultan of Surf” for his amazing ability to manufacture nearly perfect surfboards. She remembers that Ed, while attending UC, had in fact written his Master’s thesis on the subject of industrial design and manufacturing of surfboards, and that she still had a copy at her apartment. After finding the copy, she notes that it bears a stamp of July 30, 2013, indicating that the thesis was put in the index and shelved on that day.
Which of the following sections of 102 prevent a patent from issuing to West based upon the Waters thesis? A pre-AIA 102(a) B pre-AIA 102(b) C AIA 102(a) D AIA 102(b) E none of the above
Correct Answer(s):
C
Related MPEP Chapter(s):
Answer Reasoning:(C) is correct. AIA 102 will apply to the West application. That means that the Landers thesis, which was available on July 30, 2013, will be prior art for West under AIA 102(a)(1).
- Leonard Hofstadter is the inventor of a low-earth-orbiting laser telescope. He has been unable to obtain a patent despite his best efforts. He decides to file a Notice of Appeal, which is accomplished on February 25, 2013, and subsequently timely files an Appeal Brief. The appeal brief inadvertently makes no mention to who is the real party in interest. There is no assignee of record in the application. How will the Board treat the appeal brief?
A The Board will assume that Hofstadter is the real party in interest and the case will proceed on appeal.
B The Board will notify Hofstadter that he has filed a defective brief.
C The Board will notify Hofstadter that he has filed a defective brief and he will be given time to cure the defect.
D The filing of a non-compliant appeal brief will result in a dismissal of the appeal.
E The Board will do nothing until September 25, 2013, at which time the appeal will be abandoned due to failure to submit a compliant appeal brief.
Correct Answer(s): A Related MPEP Chapter(s): MPEP 1200 - Appeal Answer Reasoning:(A) is correct. See 37 C.F.R. 41.37(c)(1)(i).
- On June 3, 2012, your client Howard Wolowitz, conceived of an improvement to the Mars Rover, which he reduced to practice within a week thereafter. He filed an application in Russia, believing that since they actually still have shuttles that take humans into space, it might be a good market for his invention. The Russian application published on December 3, 2013. He eventually abandoned the Russian application after it published on June 3, 2014. He secretly sold a version of the Mars Rover to a Korean spy that was dating his close friend Leonard in July 2012, the transaction taking place in a remote coffee shop in the Ukraine. On August 3, 2012, Wolowitz granted an exclusive license to Middle Eastern consortium. Subsequently, a U.S. application was filed on December 1, 2013. Which of the following are prior art events that would prevent Wolowitz from obtaining a patent?
I. The sale to the Korean spy.
II. The Russian published application.
III. The granting of the exclusive license.
Correct Answer(s):
E
Related MPEP Chapter(s):
Answer Reasoning:None of the above.
- Which of the following is considered published or “deemed published” as that term is used in 102(a)(2)?
A An Irish published application.
B A WIPO-published PCT application that designates the U.S.
C A French published application.
D An article in the Journal of the American Medical Association.
E A Chinese published application.
Correct Answer(s):
B
Related MPEP Chapter(s):
Answer Reasoning:A WIPO-published PCT application that designates the U.S.
