AIA mini exam

Question 1

1. Avery was unhappy that her friend Joan had obtained a patent on something that she had told Joan about. She decided she would go right to the PTO and use inter partes reexam to get the PTO to revoke the patent. She puts together an affidavit detailing the facts regarding her inventorship, some prior art patents, a detailed description of the substantial new question of patentability, a copy of the patent, and all of the other necessary requirements for the request, along with the fee. The papers are filed November 1, 2011. The inter partes reexam request
   A Will be considered on the basis of the patents, but the affidavit will not be considered.
   B Will be considered on the basis of both the prior art patents and the inventorship issue.
   C Will be not be considered; but the inventorship issue will be referred to the PTO solicitor.
   D Will not be considered.
   E Will provide a period of 2 months for Avery to make a statement.

Answer 1

D. The standard for challenge is a reasonable likelihood that Avery will prevail. The SNQ standard has been replaced in inter partes reexam requests filed after 9/16/2011.

Question 2

3. Avery was unhappy that her friend Joan had obtained a patent on something that she had told Joan about. She decided she would go right to the PTO and use inter partes reexam to get the PTO to revoke the patent. She puts together an affidavit detailing the facts regarding her inventorship, some prior art patents, a detailed description of the reasonable likelihood she would prevail at least as to claim 1, a copy of the patent, and all of the other necessary requirements for the request, along with the fee. The papers are filed November 1, 2011. The inter partes reexam request
   A Will be considered on the basis of the patents, but the affidavit will not be considered.
   B Will be considered on the basis of both the prior art patents and the inventorship issue.
   C Will be not be considered; but the inventorship issue will be referred to the PTO solicitor.
   D Will not be considered.
   E Will provide a period of 2 months for Avery to make a statement.

Answer 2

A. The standard for challenge is a reasonable likelihood that Avery will prevail. Inter partes reexam only considers patents and printed publications; inventorship CANNOT be challenged.

Question 3

4. Avery was unhappy that her friend Joan had obtained a patent on something that she had told Joan about. She decided she would go right to the PTO and use ex parte reexam to get the PTO to revoke the patent. She puts together an affidavit detailing the facts regarding her inventorship, some prior art patents, a detailed description of the substantial new question of patentability, a copy of the patent, and all of the other necessary requirements for the request, along with the fee. The papers are filed November 1, 2011. The Ex parte reexam request
   A Will be considered on the basis of the patents, but the affidavit will not be considered.
   B Will be considered on the basis of both the prior art patents and the inventorship issue.
   C Will be not be considered; but the inventorship issue will be referred to the PTO solicitor.
   D Will not be considered.
   E Will provide a period of 2 months for Avery to make a statement.

Answer 3

A. The standard for challenge for ex parte reexam remains unchanged as SNQ. The inventorship issue will not be considered.

Question 4

8. Quality Chips was concerned about a patent obtained by their off-shore competitor Chips-R-Us. The patent has a filing date of October 1, 2004, and has been re-issued twice following litigation where terrific prior art showed up. Somehow, Chips-R-Us still has the patent and has indicated to customers that they were not “afraid” of Quality Chips. You’ve got some good 102(b) prior art to use against the patent in the form of a chip spec sheet available on the web at least as early as September 1, 2003. You decide to file a Reexam request and shove Chips-R-Us back to the USPTO again. However, you want to pick the reexam procedure, either inter partes or ex parte, that has a lower threshold of review to get started. You put together all the necessary elements for the chosen type of reexam. You prep and file the papers on August 1, 2012. You chose and filed an
   A Inter partes reexam using the SNQ standard.
   B Inter partes reexam using the reasonable likelihood of success standard.
   C Ex parte reexam using the clear and convincing standard of review.
   D Ex parte reexam, but if it is pending beyond Sept. 16, 2012, the standard of review will be changed from SNQ to reasonable likelihood that Quality Chips will prevail with respect to at least one claim.
   E Ex parte reexam where the threshold to initiate the proceeding remains SNQ.

Answer 4

E. SNQ is a lower threshold of review to initiate a reexam. So, you go with an ex parte reexam, and the standard of proof thereafter is preponderance of evidence.

Question 5

18. An application has been treated and acted upon in accordance with the Prioritized Examination procedure under 37 CFR 1.102. At this point, a Final Office action has been mailed. In reply, the applicant has filed an After Final amendment that creates a total claim count of 35. As a result:
    A The application becomes abandoned.
    B The amendment is refused entry owing to the claim count.
    C The amendment is considered in accord with ordinary After Final PTO procedure.
    D The Prioritized Examination is terminated.
    E The amendment is returned for rewriting to comply with the limit of 30 total claims. The applicant is given a non-extendable 1 month period within which to respond.

Answer 5

C. Once a Final Office Action is mailed, the Prioritized Exam procedure is automatically terminated. Thereafter, the application is considered like any other application under After Final rules, 37 CFR 1.116 et seq.

Question 6

19. When filing a request for Prioritized Examination under 37 CFR 1.102, the applicant may defer
    A The submission of an oath or declaration signed by the inventors, or in lieu thereof, a signed ADS identifying the inventors.
    B The filing fee.
    C The publication fee.
    D The Prioritized Examination fee.
    E None of the above.

Answer 6

E. The application must be complete and ready for examination at the time of filing. No fees or other requirements may be deferred.

Question 7

22. An Appeal has been noted in an application and an Appeal Brief has been filed. The Examiner has written and mailed an Examiner’s Answer, and the Applicant has duly filed a Reply Brief to the Answer. In response, the PTO should
    A Evaluate whether a Supplemental Examiner’s Answer is necessary.
    B Transfer jurisdiction for the Appeal to the Board.
    C Remand the case to the Examiner for preparation of a Supplemental Examiner’s Answer.
    D Wait for 2 months to elapse for the period of Supplemental Replies to pass.
    E Acknowledge receipt of the Reply Brief.

Answer 7

B. The appeals rules transfer jurisdiction to the Board when the reply brief has been filed or the time for filing such a brief has passed.

Question 8

28. The Xyborg company, devoted to Artificial Intelligence, has created a new Examiner’s Answer writing software for the PTO. It scans the existing file for evidence to help the Examiner bolster their arguments and make them appeal-proof. In one such Answer, the Examiner has listed as Evidence an affidavit that, although filed, was not admitted into the record by the Examiner. Such Evidence is:
    A A part of the file and may be relied on by either the Examiner or the Applicant.
    B Should be remanded for consideration by the Examiner.
    C Helpful, but can only be considered by the Board, not the Examiner.
    D Cannot be relied on unless admitted via petition to the Director under Rule 1.181.
    E Admitted to the record by virtue of the Examiner’s reliance thereon.

Answer 8

Answer: D. Only Evidence that has been admitted and considered may form the basis of the Appeal. Such non-admitted evidence cannot be relied on by either the Examiner or Applicant.

Question 9

29. Smitty struggles to articulate common definitions in his writing and is suffering for this inability in the preparation of an Appeal Brief based on an application he wrote and filed at the USPTO. The problem is that he defined a term in the specification portion of his application more narrowly than he would like. He needs to broaden the definition of the term in order to argue around a key reference. Smitty would like to rely on a “dictionary” definition of the term in his Brief and plans to use the American Standard Collegiate Dictionary. Smitty should:
    A Submit a declaration and petition for its entry to have the dictionary added as part of the Evidence for the appeal.
    B Submit his Brief and argument in reliance on the Dictionary and cite the definition appropriately.
    C Not rely on the dictionary inasmuch as the dictionary is not recognized by the PTO as a standard reference.
    D Only bring up the topic of definitions, if at all, at the Oral Hearing.
    E Rely exclusively on the definition in his application.

Answer 9

1204.04 Official Record on Appeal

For the purposes of appeal, ‘‘Evidence’’ does not encompass dictionaries. Excluding dictionaries from the definition of ‘‘Evidence’’ thus allows appellants to refer to dictionaries in their briefs,

B. Dictionaries are not considered official “evidence” and, as such, can be relied on like any other standard reference in Appeal Briefs at the PTO.

Question 10

30. Pete has filed an Appeal at the USPTO to contest the most recent Final Office Action. Claims 1-30 are pending and are grouped as follows. Claims 1, 5, 10, and 20 are independent. Claims 2-4 depend from 1. Claims 6-9 depend from 5. Claims 11-19 depend from 10. Claims 21-30 depend from 20. Claims 1-19 stand rejected under 35 USC 103 based on a combination of Jones and Stillman. Claims 20-30 are allowed. Pete only offers arguments as to claims 1, 5, and 10. The Board, unless told otherwise, believes
    A The appeal is only directed to claims 1, 5, and 10. All remaining claims are cancelled.
    B All claims subject to rejection are being appealed.
    C Claims 21-30 are cancelled.
    D Claims 2-4, 6-9, and 11-19 are cancelled.
    E Claims 20-30 must be pursued in a divisional.

Answer 10

B

1204 Notice of Appeal
II. APPEAL BY PATENT APPLICANT

an appeal is presumed to be taken from the rejection of all claims under rejection in a particular application unless cancelled by an amendment filed by the applicant and entered by the Office. Thus, an appeal is presumed to be taken from the rejection of all pending claims under rejectionintheapplicationregardlessofwhetherthe notice of appeal identifies fewer or more than all pending claims under rejection. If an appellant does not file an amendment cancelling claims that the appellant does not wish to appeal, but then also fails to provide any argument in the appeal brief directed to those claims, any challenge to that ground of rejection has been waived, and the Board has discretion to simply affirm any rejections against such claims.

Question 11

31. Carol needs to have the last amendment that was filed after final rejection entered for purposes of filing an Appeal Brief at the USPTO. The last amendment included final adjustments to the claims that, in her view, made them better for appeal and eliminated some of the prior art. The examiner, rightly so, asserted that the amendment raised new issues, not previously considered, and properly denied entry of the amendment After Final rejection. In order to have this amendment considered before filing the brief, Carol needs to:
    A File a petition to have the Examiner reconsider their refusal.
    B Ask the Board to remand the case to the Examiner for reconsideration.
    C File an RCE and re-offer the amendment.
    D File a CIP to add the amendment and get a new filing date.
    E File a Brief that relies on the entry of the amendment inasmuch as it is a part of the image file at the PTO and can be seen and reviewed by the Board.

Answer 11

C. There is no way, other than filing an RCE, to have an un-entered amendment entered and become a part of the record when such an amendment was properly refused.

Question 12

33. An acceptable Appeal Brief in the USPTO includes citations of case law authority to
    A Either the United States Patent Quarterly or the West Reporter system.
    B the Federal Reporter only.
    C The United States Patent Quarterly only.
    D Commissioner’s Decisions only.
    E Case copies provided with the Brief only.

Answer 12

A. The Board has a preference for USPQ but, when not covered, another reporter system is acceptable. B-E are all acceptable, but are wrong because of the use of “only.” The Board rules no longer require citation to a particular reporter system and requires copies only when a case is not found in either USPQ or West.

Question 13

44. In the Examiner’s Answer that Ben was reading, the Examiner had argued the original rejections contained in the file but had also, in addition, argued that the references had enough alternative structures to contemplate other variations on the existing rejection. The Examiner said the alternatives merely elaborated on what was already in the existing rejection. Ben should
    A File a Petition under 1.181 to have the alternatives designated as a new ground of rejection and reopen prosecution.
    B File a Reply Brief with arguments.
    C File an RCE and add subject matter to the application to get a newer filing date, and update the arguments to address the alternatives.
    D A and B.
    E Reopen prosecution by filing an amendment.

Answer 13

B. A new cite in an existing reference which only elaborates on the existing rejection is likely not a new ground of rejection and the only option here is to file a Reply Brief.

1207 Examiner’s Answer
1207.03(a) Determining Whether a Ground of Rejection is New

Question 14

48. In the Board Decision that Crenshaw recently received, the Board’s Decision had argued the original rejections contained in the file but had also, in the alternative, argued that even if the rejections could not be sustained under 35 USC 102 as anticipatory, that 35 USC 103 ought to carry the day inasmuch as the references rendered the claims obvious. In addition, since the rigor of exact one-to-one correspondence of claim elements to disclosure is relieved under 103, the rejection should be maintained because common sense would render the invention obvious. Crenshaw is very, very familiar with PTO procedure and filed a Request for Rehearing under Board Rule 41.52(a)(4). The Request was granted, and the Board designated the rejection in their decision as a new ground of rejection. Crenshaw can
    A Reopen prosecution by filing an amendment at the Board.
    B Request reconsideration of the Board rejection by the Examiner.
    C Reopen prosecution with the Examiner.
    D Request reconsideration from the Board as to their rejection.
    E C or D.

Answer 14

E. Once a new ground of rejection has been so designated by the Board, the applicant can reopen prosecution with the Examiner or, alternatively, seek reconsideration by the Board of their rejection.

Question 15

50. If a substitute examiner’s answer is written in response to a remand by the Board for further consideration of a rejection, the appellant must within 2 months of the date of the substitute examiner’s answer
    A Reopen prosecution by filing an amendment under 37 CFR 1.111.
    B Maintain the Appeal, by filing a reply brief.
    C A or B.
    D A and B.
    E All of the above.

Answer 15

1207 Examiner’s Answer
rules

E. Kind of a trick question. It is meant to be A or B. But, if any form of amendment accompanies a Reply Brief, it will treated as a request to reopen prosecution.

“If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section”.

Question 16

5. Howard Wolowitz is the inventor of the next generation, in-flight, self-contained toilet system used for deep space travel. He filed a non-provisional utility patent application on January 17, 2013, which claims the benefit of an earlier filed provisional patent application filed on January 18, 2012. The application was published in due course on July 18, 2013. On October 25, 2013, the patent examiner issued a First Office Action on the Merits, which rejected all claims. Wolowitz, by and through his patent attorney, responded with an Amendment of the claims on January 24, 2014. By action mailed on May 16, 2014, the examiner again rejected all claims, but suggested that if claim 1 were amended to include the limitations presented in dependent claim 2, it would be allowable. Wolowitz responded with an Amendment as the examiner suggested, which placed the application in condition for allowance, on September 29, 2014, together with the appropriate request for automatic extension and the required fee.
   On October 2, 2014, Dr. Rajesh Koothrappali comes to your office. He is a very angry man because he has just learned that his one-time friend, Howard Wolowitz, has applied for a patent on an invention that Koothrappali knows not to be patentable. Koothrappali presents his Ph.D. thesis bearing a date stamp of August 3, 2011, which is the day it was indexed in the University library. He says that his thesis almost completely describes Wolowitz’s alleged invention. You review the thesis and come to the conclusion that the Wolowitz claimed invention contains only minor, obvious differences when compared with the Koothrappali thesis.
   Based on these facts, what is the best path to pursue as Koothrappali seeks to challenge the Wolowitz application?
   A Do nothing, because Wolowitz has placed his application in condition for allowance. Therefore, it is already too late to file a third-party submission or protest in the Wolowitz application.
   B Immediately prepare and file a preissuance submission because the patent examiner has not yet issued a Notice of Allowance. If a preissuance submission is filed prior to the examiner issuing a Notice of Allowance, it will be considered timely.
   C Do nothing; it is already too late to file a third-party submission, because a third-party submission would have to have been filed prior to January 18, 2014.
   D Immediately prepare and file a preissuance submission, because one may be timely filed at any point in time prior to the issuance of the patent.
   E File a protest, because it is already too late to file a third-party submission of prior art.

Answer 16

1134
C
A third-party submission must be filed prior to the earlier of: (1) The date a notice of allowance; or (2) The later of: (i) 6 months after the date on which the application is first published by the USPTO, or (ii) The date of the first rejection of any claim by the examiner.
The Wolowitz application published July 18, 2013. Six months after that publication is January 18, 2014. The date the first rejection was given or mailed was October 25, 2013. Therefore, the later of these two dates is January 18, 2014. Thus, a third-party submission would have to be filed no later than the earlier of the Notice of Allowance, which has not yet occurred based on these facts, or January 18, 2014. Thus, a third-party preissuance submission of prior art must have been filed prior to January 18, 2014.

the protest was filed prior to the date the application was published under § 1.211, or a notice of allowance under § 1.311 was mailed, whichever occurs first:

Question 17

9. Dr. Sheldon Cooper is the inventor of a device that allows for the human consciousness to be successfully transferred into an artificial life form. He has tested the device and it worked as expected, although he did have a devil of a time getting his consciousness back into his human body due to the ill-conceived notion that it would be best to have his consciousness reside in a laptop.
   Cooper filed a non-provisional utility patent application on August 31, 2012, which claims the benefit of an earlier filed UK application filed on September 9, 2011. The application was published in due course on March 14, 2013.
   On October 1, 2014, the patent examiner issued a First Office Action on the Merits, which rejected all claims. Cooper, by and through his patent attorney, responded with an Amendment of the claims on January 24, 2015, together with the required request for automatic extension of time and associated fee. By action mailed on May 16, 2015, the examiner again rejected all claims, but suggested that if claim 15 were amended to include the limitations presented in dependent claims 16 and 17, it would be allowable. Cooper, again operating by and through his patent attorney, responded with an Amendment as the examiner suggested, which placed the application in condition for allowance, on July 6, 2015. A Notice of Allowance was mailed on August 13, 2015.
   What is the last day a third party could have filed a preissuance submission of prior art?
   A September 14, 2013.
   B September 30, 2014.
   C October 1, 2014.
   D August 12, 2015.
   E August 13, 2015.

Answer 17

ANSWER: B. 37 CFR § 1.290(b) sets forth the rules relative to the deadline for filing a preissuance third-party submission. A third-party submission must be filed prior to the earlier of: (1) The date of a notice of allowance; or (2) The later of: (i) 6 months after the date on which the application is first published by the USPTO, or (ii) The date of the first rejection of any claim by the examiner.
The date of the notice of allowance is August 13, 2015.
Publication by the USPTO occurred on March 14, 2013, and 6 months thereafter is September 14, 2013.
The date of the first rejection by the examiner is October 1, 2014.
Thus, the deadline is the earlier of: (1) August 13, 2015; or (2) The later of (i) September 14, 2013, or (ii) October 1, 2014. Thus, a preissuance third-party submission would have to be filed before October 1, 2014. Therefore, the last day on which to file a third-party submission of prior art was September 30, 2014.

Question 18

Which of the following statements, if any, are correct with respect to how the Patent Office may use the information relative to the patent owner’s filings in the Eastern District of Texas?
A Statements made by the patent owner in a Federal court cannot be used during reexamination proceedings.
B Statements made by the patent owner in a Federal court may be used to determine whether there is a substantial new question of patentabiity, but may not thereafter be used to determine validity of any claim.
C Statements made by the patent owner in a Federal court may not be used to determine whether to order reexamination of the Hagarthy patent, but if reexamination is ordered, such statements may be considered if they have previously been made a part of the file.
D Statements made by the patent owner in Federal court can only be considered by the Patent Office if there are contradictory interpretations of the same claim offered by the patent owner.
E None of the above.

Answer 18

2240 Decision on Request

C. Pursuant to 37 CFR 1.515(a), a submitted statement and any accompanying information submitted pursuant to Section 1.501(a)(2) will not be considered by the patent examiner when making a determination on any request for reexamination. While perhaps somewhat counterintuitive, this interpretation is clearly in keeping with the text of AIA. 35 U.S.C. 301(d) states in relevant part, “A written statement…shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324.” Thus, the AIA prohibits the use of the statement for any purpose other than determining the claim scope in a proceeding that has already been ordered or instituted. It may not be considered when determining whether to order or institute the proceeding.
Notwithstanding, any statement of the patent owner and any accompanying information that is a part of the record in a patent being reexamined may be considered by the patent examiner to determine the proper meaning of a patent claim after a reexamination proceeding has been commenced. See 37 CFR 1.522(a).
Therefore, A is incorrect because the statement can be used once reexamination is initiated.
B is incorrect because it cannot be used to determine whether to institute reexamination.
D is incorrect because there is no requirement that patent owner statements relative to claim scope be permitted only when there is a conflict of interpretation.
E is incorrect because C is correct.

Question 19

14. Spencer Dagget is the inventor of a digital camera that is capable of effectively setting a mode when the electric power is turned on. Dagget is also the owner of U.S. Patent No. 7,598,995, which covers his digital camera innovation.

The Free Camera Alliance (FCA), is a non-profit 501(c)(3) entity. Their primary goal is to eradicate the world from the treacherousness of digital-camera-related exclusive rights. Dagget has been an outspoken opponent of FCA, which has drawn the group’s ire. In order to divert Dagget’s attention from assaults on the FCA and its Silicon Valley corporate funders, FCA has filed a request for ex parte reexamination of the Dagget ‘995 patent. Upon reviewing the request for reexamination, the Patent Office has ordered reexamination to commence on January 23, 2013.

Stanley Fendster is no friend of the FCA, but he is a mortal enemy of Dagget. The one-time friends and colleagues have become bitterest enemies thanks to the fact that they invent in the same technological space. Furthermore, Fendster still blames Dagget for his inability to obtain a patent, since patent examiner after patent examiner rejects his applications based on the Dagget ‘995 patent, alternatively rejecting for novelty and non-obviousness reasons.

Fendster would like to submit prior art to the Patent Office, but since he is deathly afraid of retribution, he wants to do so anonymously. He comes to your office on March 15, 2013, seeking your help in filing a written submission of prior art to the Patent Office. What should your advice be to Fendster?
A Since Fendster is neither the patent owner nor the third-party requester, he cannot file a written submission of prior art during a reexamination proceeding.
B While it is not possible to file a written submission of prior art during a reexamination proceeding, one may be filed upon the conclusion of the reexamination proceeding.
C A written submission can be filed during reexamination, but such a submission is limited to patent owner statements relative to claim scope filed in a Federal court.
D It is possible to submit a written submission of prior art during reexamination, but because Fendster is neither the patent owner nor the third-party requester, it will not be entered into the patent file until the conclusion of the reexamination proceeding.
E Fendster can file a written submission of prior art during reexamination and have it entered into the file during the reexamination proceeding if he seeks joinder as an interested party and pays the associated fee.

Answer 19

2202
1.502 Processing of prior art citations during an ex parte reexamination proceeding:
The entry in the patent file of citations submitted after the date of an order to reexamine pursuant to § 1.525 by persons other than the patent owner, or an ex parte reexamination requester under either § 1.510 or § 1.535, will be delayed until the reexamination proceeding has been terminated.

D. Citation of prior art can be made in reexamination proceedings, including the filing of statements by the patent owner in Federal court. However, if the person citing the prior art is not either the patent owner or the third-party requester, the citation of prior art will not be entered into the file until the completion of the reexamination proceeding. See Section 1.501(c) and 1.502.
A is incorrect because there is no prohibition against someone other than the patent owner or third party requester filing during reexamination.
B is incorrect because Fendster may file during reexamination, but by rule it will not be entered into the file until the reexamination is concluded.
C is incorrect because such filings are not limited to statements made by the patent owner in Federal Court. See Section 1.501(c)(1).
E is incorrect because there is no provision authorizing a party to join an instituted ex parte reexamination.

Question 20

15. Humphrey Totter is an inventor, businessman and sometimes philanthropist. His latest entrepreneurial endeavor relates to a motor-controlled macro rail for close-up focus-stacking photography. It has come to his attention that there is an issued U.S. Patent to Koda Poliride, which could present problems for him if he were to move forward. In researching the Poliride patent, Totter uncovers various litigations and enforcement actions brought by Poliride. It seems he is quite litigious and vigorously enforces his rights whenever possible.
    As Totter continues to read the various litigation filings, he notices that Poliride has made important, although nuanced, statements that seem to conflict. For example, in the U.S. Federal District Court for the Eastern District of Texas, attorneys for Poliride have made arguments regarding the proper interpretation of the term “controller communicatively coupled,” which seem to contradict the arguments made by Poliride in the U.S. Federal Court for the Northern District of California.
    Totter comes to your office for assistance. He is uncertain whether he will pursue this business endeavor, and he is not willing to pay your fee to challenge the patent, but he does think that the USPTO should be made aware of Poliride’s contradictory interpretations of what the claims mean. He also indicates that if he does move forward, he may well want to challenge the patent at some future time. In accordance with his wishes, you file a written submission with the Patent Office.
    Subsequently, Trotter learns that counsel in California and Texas have raised the question of seemingly contradictory statements made by Poliride. Both district courts rejected the assertion that the statements by Trotter were contradictory. No appeal was taken in either case on this particular issue.
    What, if anything, must be done to notify the USPTO?
    A As a registered patent practitioner, you have a duty to supplement the submission made and notify the Patent Office that the district court judges have disagreed with your written assertions.
    B As the real party in interest, Trotter has an obligation to supplement the submission made to the USPTO to reflect later-learned information of a probative nature.
    C Both Trotter and you have a duty to supplement the submission made to the Patent Office.
    D There is a duty to continue to supplement the submission, but only if the party who filed the written submission subsequently files a request for ex parte reexamination.
    E There is no continuing duty to supplement the submission.

Answer 20

E. During the comment phase after proposing rules, some questioned the USPTO with respect to whether there was a continuing duty to supplement any written submission. The USPTO responded: “The statute does not impose a continuing duty to supplement any submissions made pursuant to 35 U.S.C. 301(a)(2). Should a party determine that a subsequent submission is needed, one can be filed in accordance with § 1.501.”

Question 21

17. Which of the following statements are in accordance with USPTO practice and procedures?
    A A written submission pursuant to 37 CFR 1.501(a) must contain a certification that a copy of a submission under § 1.501 has been served in its entirety upon the patent owner.
    B Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501.
    C A derivation may be instituted involving an application under secrecy order if the inventor can sufficiently demonstrate the likelihood of substantial prejudice and likely later unavailability of affiants who will be necessary to establish facts to demonstrate derivation.
    D Prior to granting a request for ex parte reexamination, the Patent Office must verify that estoppel provisions do not prohibit the filing of the reexamination request.
    E None of the above.

Answer 21

B. A is incorrect, but close. § 1.501(e) provides that a person other than the patent owner making a submission pursuant to § 1.501(a) must include a certification that a copy of a submission under § 1.501 has been served in its entirety upon the patent owner at the address as provided for in § 1.33(c). The USPTO specifically modified the Final Rules so as to make it unnecessary for a patent owner to serve themselves if they file a written submission pursuant to 1.501(a). When a patent owner might make such a submission seems unclear, but this was specifically raised by a comment to the proposed rules and accommodated in the Final Rules by the USPTO.
B is correct, and set forth in 37 CFR 1.510(a).
C is incorrect because a derivation proceeding may not be initiated involving an application under secrecy order. See 37 CFR 5.3(b).
D is incorrect because it is the obligation of the requesting party to certify the estoppel provisions do not preclude the filing of the request for reexamination. Specifically, 37 CFR 1.510(b)(6) states: “A certification by the third party requester that the statutory estoppel provisions of 35 U.S.C.315(e)(1) or 35 U.S.C.325(e)(1) do not prohibit the requester from filing the ex parte reexamination request.”

Question 22

inventor got crazy, company would like to file the application in the name of the company and omit any reference to inventor
what advice
A Effective September 16, 2012, it is no longer required that patent applications in the United States be filed in the name of the inventor, so Mr. Hooston’s identity can be effectively concealed without violating any law or rule of practice.
B An application must include, or be amended to include, the name of the inventor for any invention claimed in the application.
C An inventor’s oath or declaration is no longer necessary; therefore, Mr. Hooston can be omitted and application for patent can be filed in the name of SOL.
D The name of an inventor may be omitted if the application filed is a provisional patent application, but if the application filed is a nonprovisional patent application, the name of the inventor and an oath or declaration must be submitted.
E The word “applicant” refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter. Therefore, the inventor does not need to be identified in a patent application filed in the United States.

Answer 22

600

B. Answer choice B is a direct quotation from 37 CFR 1.41(a), and is likewise found in 35 U.S.C. 115(a). See also 37 CFR 1.63(a). Although an application for a patent may be filed in the name of the “applicant” on or after September 16, 2012, the inventor still must be identified. 35 U.S.C. 115(a) provides that an application filed under 35 U.S.C. 111(a) or that commences the national stage under 35 U.S.C. 371 must include, or be amended to include, the name of the inventor for any invention claimed in the application.
While an assignee, a person under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter may make an application for patent as provided for in 35 U.S.C. 118, an oath or declaration (or an assignment containing the required statements) by each inventor is still required, except in the circumstances set forth in 35 U.S.C. 115(d)(2) and in any additional circumstances specified by the Director in the regulations. Notwithstanding, the inventor must still be identified.

Question 23

inventor disappeared. It is now necessary to file a patent application at the United States Patent and Trademark Office claiming the cloaking device invented by Sally. Which of the following would best be in accordance with USPTO practice and procedures for an application filed on or after September 16, 2012.
A Neutral Zone must demonstrate that Sally was under both an obligation to assign the invention and that she cannot be found after reasonable efforts to locate her, in order to be able to file a patent application without the inventor executing an oath or declaration.
B An inventor’s oath or declaration must always be filed when a patent application is filed in the United States Patent and Trademark Office.
C Each individual who is an inventor or joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.
D Each individual who is an inventor or joint inventor of a claimed invention in a non-provisional patent application must execute an oath or declaration in connection with the application.
E If Neutral Zone can demonstrate that Sally was either under an obligation to assign the invention or that she cannot be found after reasonable efforts to locate her, a patent application may be filed without executing an oath or declaration.

Answer 23

604 Substitute Statements

A.

35 U.S.C. 115(a) says that when one files a patent application under either 35 U.S.C. 111(a) (i.e., a nonprovisional patent application) or enters the national stage under 35 U.S.C. 371, each inventor must be named and each inventor or joint inventor must execute an oath or declaration unless “otherwise provided.” It is 35 U.S.C. 115(b) that relates to the exception for each inventor to submit an oath or declaration.
In lieu of executing an oath or declaration under subsection 115(a), the applicant for patent may provide a “substitute statement.” The substitute statement must identify the individual for whom the statement pertains. Furthermore, the substitute statement must either state that the inventor identified is under an obligation to assign and refused to execute the oath or declaration (see 115(d)(2)(B)) or that the inventor is deceased, legally incapacitated or cannot be found after reasonable effort (see 115(d)(2)(A)).