April 02 AM/PM Flashcards
- Jill, a registered patent agent, receives a Notice of Allowance from the USPTO
with a mail date of November 13, 2001, regarding a utility patent application for an
improved garden hose which she had filed on behalf of one of her small entity clients.
The Notice of Allowance specifies a sum that must be paid within three months of the
mailing date to avoid abandonment. The sum specified includes both the issue fee and
the publication fee. As a result of a small fire in her office building, Jill is unable to
resurrect her files until the last day of the three month period. Jill mails a letter to the
USPTO on February 13, 2002 using the U.S. Postal Service. Jill does not employ the
procedures of 37 CFR 1.8 or 1.10 to mail the letter. The letter is received in the USPTO
on February 15, 2002. The letter correctly identifies the application. The letter
authorizes the USPTO to charge the proper issue fee for a small entity to her deposit
account. The account has been identified in a previously filed authorization to charge
fees. At the time the letter was filed in the USPTO, the account had a balance of
$1000.00 in funds. Nothing in the letter authorized payment of the publication fee, no
petition for an extension of time was filed, and an Office-provided issue fee transmittal
form was not filed. No postal emergency was involved in filing the letter. Which of the
following statements accords with proper USPTO practice and procedure?
(A) The application will become abandoned because Jill did not authorize
payment of the publication fee.
(B) The application will not become abandoned because the authorization to
charge fees operates as a request to charge the correct fees to any deposit
account identified in a previously filed authorization to charge fees.
(C) The application will become abandoned because Jill’s letter did not
include a petition for an extension of time accompanied by the proper fee.
(D) The application will become abandoned because a completed Officeprovided
issue fee transmittal form, PTOL-85B, did not accompany Jill’s
letter.
(E) The application will become abandoned because Jill’s letter was not
timely filed in the USPTO and it was not mailed in accordance with the
provisions of 37 CFR 1.8 or 1.10.
- ANSWER: (E) is correct. A communication mailed within the time given for response in
accordance with the procedure of 37 C.F.R. § 1.8 or 1.10 is considered timely filed even if it is
received after the date a reply is due. In (E), the letter was not mail in accordance with 37
C.F.R.§ 1.8 or 1.10. Therefore, the letter would be considered filed when it is received in the
USPTO. 37 C.F.R. § 1.311(a) states, “This three month period is not extendable.” Without
complying with 37 C.F.R. § 1.8 or 1.10, the filing date of the letter is the date it was received in
the USPTO, i.e., February 15, 2002, which is after the due date for payment of the issue fee,
February 13, 2002. (A) is wrong because the reason given for abandonment is incorrect. The
application becomes abandoned for the reasons expressed in (E). Although 37 C.F.R. § 1.311(b)
provides that the submission of an incorrect issue fee (or other post-allowance fees set forth in 37
C.F.R. § 1.18) operates as a request to charge the correct issue fee, it does not change the fact
that Jill’s letter is received by the USPTO after expiration of the non-extendable statutory three
month period for payment of the issue fee. (B) is wrong because the application will become
abandoned because Jill’s letter will be received by the USPTO after expiration of the nonApril
extendable statutory three month period. (C) is wrong because the period for payment of the
issue fee was not extendable by petition. The period is set by statute. 35 U.S.C. § 151.
Abandonment occurred because Jill’s letter was received by the USPTO after expiration of the
non-extendable statutory three month period. A petition for an extension of time was not
available in this case. (D) is wrong because the reason for abandonment is wrong. Filing the
form is optional. Although 37 C.F.R. § 1.311(b) provides that the submission of a completed
Office-provided issue fee transmittal form, PTOL-85B, operates as a request to charge the
correct issue fee (or other post-allowance fees set forth in 37 C.F.R. § 1.18) to any deposit
account identified in a previously filed authorization to charge fees, it does not change the fact
that Jill’s letter was received by the USPTO after expiration of the non-extendable statutory three
month period.
- Mr. Brick, the inventor, files an application with the USPTO on January 2, 2001
containing a single claim for his invention: a new bouncing ball called “Y”. Brick
receives a first Office action dated June 4, 2001 from the primary examiner handling
Brick’s application. The examiner rejected Brick’s claim only under 35 U.S.C. § 103 on
the grounds that Reference X teaches a bounc ing ball called “Q,” and that although “Y”
and “Q” are not the same, it would have been obvious to one of ordinary skill to make
changes to the “Q” ball in order to obtain a ball just like Brick’s “Y” ball.
On August 2, 2001, Brick responds by stating that his new “Y” ball bounces
unexpectedly higher than the “Q” ball described in Reference X. Brick includes a
declaration, signed by Mrs. Kane, that includes extensive data comparing the bouncing
results for the “Y” and “Q” balls and showing that the “Y” ball bounces unexpectedly
higher than the “Q” ball. Brick argues that the rejection under 35 U.S.C. § 103 should be
withdrawn because he has proven that, in view of the unexpectedly higher bounce of the
“Y” ball as compared to the “Q” ball, it would not have been obvious to one of ordinary
skill in the art to make changes to the “Q” ball to obtain Brick’s “Y” ball.
On October 2, 2001, Brick receives a final rejection from the examiner. The rejection
states, in its entirety: “The response has been reviewed but has not been found persuasive
as to error in the rejection. The claim is finally rejected under 35 U.S.C. § 103 for the
reasons given in the first Office action.” Brick believes he is entitled to a patent to his
new bouncing ball “Y.” How should Brick proceed?
(A) Brick should give up because the declaration did not persuade the
examiner of the merits of Brick’s invention.
(B) Brick should timely file a Request for Reconsideration asking the
examiner to reconsider the rejection on the basis of the Kane declaration
and, as a precaution against the Request for Reconsideration being
unsuccessful, also timely file a Notice of Appeal.
(C) Brick should respond by submitting a request for reconsideration
presenting an argument that Reference X does no t provide an enabling
disclosure for a new ball with the unexpectedly higher bounce of his “Y”
ball.
(D) Brick should respond by submitting a request for reconsideration
presenting an argument that Reference X does not provide a written
description for a new ball with the unexpectedly higher bounce of his “Y”
ball.
(E) Brick should respond by submitting a request for reconsideration
presenting an argument the declaration data proves that the “Q” ball and
the “Y” are not identical.
ANSWER: (B) is the correct answer. It is inappropriate and injudicious to disregard any
admissible evidence in any judicial proceeding. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 218 USPQ 871 (Fed. Cir. 1983). The examiner has not analyzed the data in the declaration
nor provided an explanation as to why the declaration did not overcome the rejection.
Furthermore, the rejection has not been reviewed anew in light of the declaration. The examiner
should have reweighed the entire merits of the prima facie case of obviousness in light of the
data. In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986). Accordingly,
Block should ask that the rejection be reconsidered and file a Notice of Appeal to safeguard his
interest for a review of the rejection by the Board of Patent Appeals and Interferences if the
rejection is not reconsidered. 37 C.F.R. § 1.116. (A) is wrong because there is no evidence that
the examiner made any review of the declaration. (C) is wrong because whether or not Reference
X provides an enabling disclosure for Block’s invention is immaterial to the question of
obviousness. If there were to be a question of enabling disclosure for Reference X, it would be
with respect to the “Q” ball relied upon by the examiner, not applicant’s “Y” ball. (D) is wrong
because whether or not Reference X provides a written description for Block’s invention is
immaterial to the question of obviousness raised by the examiner. (E) is wrong because the issue
is one of obviousness under 35 U.S.C. § 103, not identity under 35 U.S.C. § 102. Given that the
examiner has rejected the claim under 35 U.S.C. § 103 and not under § 102, the examiner has
already conceded that the “Q” and “Y” balls are not the same.
- Johnnie owns a supermarket store in Cleveland, Ohio, and is constantly frustrated
when little children drop their chewing gum on Johnnie’s clean floor in the supermarket.
In her spare time, Johnnie develops an entirely novel type of coating material that she
applies to floor tile. The coating material resists adhesion to chewing gum. In order to
check out the effectiveness of the floor tile coating material, on December 31, 2000, she
secretly covers the floor tiles in her supermarket with the new chewing gum resistant
floor tile coating material. Johnnie is amazed at the results inasmuch as cleaning the
floor was never easier. On January 30, 2001, Johnnie, satisfied with the experimental use
results, ceased testing the use of the coating material. The ability of the coating material
to withstand chewing gum adhesion continued unabated throughout the remainder of - On January 1, 2002, one of Johnnie’s many customers, James, remarked at how
clean the floor looked. Johnnie then told James of her invention. James thinks for one
moment and suggests that the floor tile coating material may be useful in microwave
ovens, so that food will not stick to the interior sides of the microwave oven. James
discusses getting patent protection with Johnnie. Which of the following is true?
(A) Johnnie could never be entitled to a patent on a floor tile in combination
with a coating material affixed to the outer surface of the tile.
(B) James can be named as a coinventor with Johnnie in a patent application
claiming a microwave oven wherein the internal surfaces of the oven are
coated with the coating material.
(C) Since for one year Johnnie told nobody that the floor tile in her
supermarket contained the new chewing gum resistant coating material,
she would never be barred from obtaining patent protection for the floor
coating material.
(D) Use of the floor tile coating material in microwave ovens would have been
obvious to one of ordinary skill in the art, since James thought of it within
seconds after first learning of the floor tile coating material, and James
was not skilled in the art.
(E) The floor tile having the coating material affixed to the outer surface of
the tile, an article of manufacture, would not be patentable as of January 1,
2002 inasmuch as the article was in public use on the supermarket floor
for one year.
- ANSWER: (B). Since Johnnie developed the material and James thought of the idea to use
it in microwave ovens, they rightfully could be considered coinventors of the new article of
manufacture. As to (A) and (C), public use began on when the experimental use ended on
January 30, 2001, and occurs even when the public is unaware that they were walking on the
developed material since the material was used in a public place. As to (D), even though James
only took a second to think of the idea, he is entitled to receive a patent unless it was obvious to
one of ordinary skill in the art. Nothing in the prior art revealed that it was obvious to use the
material in microwave ovens. As to (E), the article of manufacture is not barred even though the
floor material itself cannot be patented. Johnnie conducted an experimental use of the article
from December 31, 2000 through January 30, 2001. Thereafter, Johnnie had one year from the
end date of the experimental use to file a patent application for the article. Johnnie may file a
patent application before January 30, 2002.
- Which of the following is not a USPTO recommendation or requirement?
(A) Claims should be arranged in order of scope so that the first claim presented is the least restrictive.
(B) Product and process claims should be separately grouped.
(C) Every application should contain no more than three dependent claims.
(D) A claim which depends from a dependent claim should not be separated from that dependent claim by any claim which does not also depend from the dependent claim.
(E) Each claim should start with a capital letter and end with a period.
- ANSWER: (C). The USPTO does not require or recommend a minimum or maximum number of dependent claims. 37 C.F.R. § 1.75(c). (A) is a USPTO recommendation. See MPEP 608.01(m) (“Claims should preferably be arranged in order of scope so that the first claim presented is the least restrictive.”). (B) is a USPTO recommendation. See MPEP 608.01(m) (“Similarly, product and process claims should be separately grouped.”). (D) is a PTO recommendation. See MPEP 608.01(n), part IV. (E) is a USPTO requirement. See MPEP 608.01(m) (“Each claim begins with a capital letter and ends with a period.”).
- An amendment filed in January 8, 2002, in an unassigned nonprovisional
application seeks to cancel claims so that fewer than all of the currently named inventors
are the actual inventors of the invention being claimed. The amendment includes a
request to delete the names of the persons who are not inventors. In accordance with
proper USPTO rules and procedure, the request may be signed by which of the
following?
(A) A registered practitioner not of record who acts in a representative
capacity under 37 CFR 1.34(a).
(B) All of the applicants (37 CFR 1.41(b)) for patent.
(C) A registered practitioner of record appointed pursuant to 37 CFR 1.34(b).
(D) (B) and (C).
(E) (A), (B), and (C).
ANSWER: (E) is the correct answer. 37 C.F.R. § 1.48(b) (effective November 7, 2000);
“Changes To Implement the Patent Business Goals; Final Rule,” 65 FR 54604, 54619
(September 8, 2000). As stated in 65 FR at 54619, middle column, “Sections 1.48(b) and (d) are
revised to indicate that a request to correct the inventorship thereunder must be signed by a party
as set forth in § 1.33(b)…” (A), (B), and (C) are provided for in 37 C.F.R. § 1.33(b). Thus (E),
the most inclusive answer, is correct.
- Which of the following is not required in order for a foreign application that has
matured into a foreign patent to qualify as a reference under 35 U.S.C. § 102(d)?
(A) The foreign application must have actually been published before the
filing of an application in the United States, but the patent rights granted
need not be enforceable.
(B) The foreign application must be filed more than 12 months before the
effective filing date of the United States application.
(C) The foreign and United States applications must be filed by the same
applicant, his or her legal representatives or assigns.
(D) The foreign application must have actually issued as a patent or inventor’s
certificate before the filing of an application in the United States. It need
not be published but the patent rights granted must be enforceable.
(E) The same invention must be involved.
- ANSWER: (A) is the most correct answer. 35 U.S.C. § 102(d). The foreign application
need not be published, but the patent rights granted must be enforceable. MPEP § 706.02(e).
(B), (C), (D) and (E) are required by 35 U.S.C. § 102(d).
- For purposes of determining whether a request for continued examination is in
accordance with proper USPTO rules and procedure, in which of the following situations
will prosecution be considered closed?
(A) The last Office action is a final rejection.
(B) The last Office action is an Office action under Ex Parte Quayle.
(C) A notice of allowance has issued following a reply to a first Office action.
(D) The application is under appeal.
(E) All of the above.
All of the answers relate to the evidence of the close of prosecution and, hence, E
is the answer since it includes all of them.
- Assume that conception of applicant’s complex invention occurred prior to the
date of the reference, but reduction to practice occurred after the date of the reference.
Which of the following is sufficient to overcome the reference in accordance with proper
USPTO practice and procedure?
(A) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to allege that
applicant or patent owner has been diligent.
(B) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to clearly
establish conception of the invention prior to the effective date of the
reference, and diligence from just prior to the effective date of the
reference to actual reduction to practice. The presence of a lapse of time
between the reduction to practice of an invention and the filing of an
application thereon is not relevant.
(C) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to clearly
establish conception of the invention prior to the effective date of the
reference. Diligence need not be considered.
(D) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to show
conception and reduction to practice in any country.
(E) In a 37 CFR 1.131 affidavit or declaration, it is always sufficient to prove
actual reduction to practice for all mechanical inventions by showing plans
for the construction of the claimed apparatus.
(B) is the most correct answer. See Ex parte Merz, 75 USPQ 296 (Bd. App.
1947) (holding that the “lapse of time between the completion or reduction to practice of an invention and the filing of an application thereon” is not relevant to an affidavit or declaration under 37 C.F.R. § 1.131(b)); MPEP § 715.07(a). (A) is incorrect. Ex parte Hunter, 1889 C.D. 218, 49 O.G. 733 (Comm’r Pat. 1889); MPEP § 715.07(a). Applicant must show evidence of facts establishing diligence. (C) is incorrect. Ex parte Kantor, 177 USPQ 455 (Bd. App. 1958)
(after conception has been clearly established, diligence must be considered prior to the effective date is clearly established, since diligence then comes into question); MPEP § 715.07(a). (D) is incorrect. MPEP § 715.07(c). 37 C.F.R. § 1.131(a) provides for the establishment of a date of completion of the invention in a NAFTA or WTO member country, as well as in the United States, an applicant can establish a date of completion in a NAFTA member country on or after December 8, 1993, the effective date of section 331 of Public Law 103 – 182, the North American Free Trade Agreement Act, and can establish a date of completion in a WTO member country other than a NAFTA member country on or after January 1, 1996, the effective date of section 531 of Public Law 103 – 465, the Uruguay Round Agreements Act. Not all countries are members of NAFTA or WTO, and prior invention in a foreign country cannot be shown without regard for when the reduction to practice occurred. (E) is incorrect. MPEP § 715.07. Actual reduction to practice generally, but not always, requires a showing that the apparatus actually
existed and worked, “There are some devices so simple that a mere construction of them is all that is necessary to constitute reduction to practice.” In re Asahi/America Inc., 68 F.3d 442, 37 USPQ2d 1204 (Fed. Cir. 1995) (citing Newkirk v. Lulegian, 825 F.2d 1581, 3USPQ2d 1793 (Fed. Cir. 1987) and Sachs v. Wadsworth, 48 F.2d 928, 929, 9 USPQ 252, 253 (CCPA 1931).
The claimed restraint coupling held to be so simple a device that mere construction of it was sufficient to constitute reduction to practice. Photographs, coupled with articles and a technical report describing the coupling in detail were sufficient to show reduction to practice.).
While vacationing in Mexico on April 14, 2001, Henrietta invented a camera that
operated at high temperature and is waterproof. She carefully documented her invention
and filed a provisional application in the USPTO on April 30, 2001. She conducted tests
in which the camera withstood temperatures of up to 350 degrees Fahrenheit. However,
when the camera was placed in the water leaks were discovered rendering the camera
inoperable. On April 12, 2002, Henrietta conceived of means that she rightfully believed
will fix the leakage issue. Henrietta came to you and asked whether she can file another
application. Henrietta desires to obtain the broadest patent protection available to her.
Which of the following is the best manner in accordance with proper USPTO practice
and procedure for obtaining the patent covering both aspects of her invention?
(A) She can file a nonprovisional application on April 30, 2002 claiming
benefit of the filing date of the provisional application, disclosing the
means for fixing the leak and presenting a claim covering a camera that
operates at high temperatures and a claim covering a camera that is
waterproof, or presenting a claim covering a camera that both operates at
high temperatures and is waterproof.
(B) Henrietta cannot rightfully claim a camera that is waterproof in a
nonprovisional application filed on April 30, 2002, since she tested the
camera and the camera developed leaks.
(C) Henrietta can file another provisional application on April 30, 2002 and
obtain benefit of the filing of the provisional application filed on April 30,
2001.
(D) Henrietta may establish a date of April 14, 2001 for a reduction to practice
of her invention for claims directed to the waterproofing feature.
(E) Henrietta should file a nonprovisional application on April 30, 2002
having claims directed only to a camera that withstands high temperatures
since the camera that she tested developed leaks.
ANSWER: (A). As to (B) and (E), an actual reduction to practice is not a necessary
requirement for filing an application so long as the specification enables one of ordinary skill in
the art to make and use the invention. However, (D) is incorrect, as a reduction to practice may
not be established since the camera leaked. As to (C), a second provisional is not entitled to the
benefit of the filing date of the first provisional application. 35 U.S.C. § 111(h)(7).
- Roger Rocket is a designer of paper cups at Paper America. During his free time, he
likes to attend baseball games at Yankee Stadium. One day, while seated in the stands,
he caught a fly ball. He took the baseball home and played catch with his friends Andy
Cannon, Orlando Torpedo, and Mariano Missle. Unfortunately for Rocket, Cannon has a
problem with accuracy. Cannon threw the ball over Rocket’s head and straight through a
neighbor’s front window. The shattered glass ripped the lining off of the baseball.
Instantly, Rocket conceived a more durable baseball with an exterior similar to that of a
golf ball. Rocket worked for months on his invention in Missle’s garage. His new
baseball was comprised of a titanium core, and a plastic shell having circular dimples and
V-shaped laces. Torpedo realized and told Rocket that Y-shaped laces would enable
baseball players to throw the ball faster. Cannon, an engineer in a radar gun laboratory,
tested the velocity of the baseball with both V and Y-shaped laces. To Cannon’s surprise,
the baseball traveled 10 M.P.H. faster with the Y-shaped laces. Rocket wanted patent
protection for a baseball having a titanium core, and a plastic shell having circular
dimples and Y-shaped laces, so he approached Yogi Practitioner for assistance. Rocket
has no obligation, contractual or otherwise, to assign his inventions to Paper America.
In accordance with proper USPTO practice and procedure, who should execute
the oath?
(A) Rocket (B) Rocket and Torpedo (C) Rocket and Cannon (D) Rocket, Torpedo, and Cannon (E) Rocket, Torpedo, Cannon, and Missle
- Before executing the oath, Rocket wanted to ask Practitioner a question. On his
way to Practitioner’s office, Rocket was instantly killed when a drunk driver hit his car.
The officers or employees of Paper America are not related to Rocket. Who can execute
an oath on Rocket’s behalf?
(A) The President of Paper America (B) The CEO of Paper America (C) Rocket’s manager at Paper America (D) Rocket’s legal representative (E) None of the above
- Practitioner received all of the proper papers required to
receive a filing date. However, due to an unexpected emergency, he had to fly out of the
country that evening to conduct discovery in another matter. Practitioner knew that he
would be out of the office for at least 4 weeks, so before leaving, he left a note instructing
his assistant to file the Rocket application on October 13, 2001, using an Express Mailing
label. His assistant did not see the note until 8:00 P.M. on Friday, October 19, 2001. On
Monday, October 22, 2001, Rocket’s assistant deposited the Rocket application in the
United States Postal Service with a proper Express Mailing label. The Postal Service
properly completed a legible label showing an October 22, 2001 date in. The
correspondence was received in the USPTO on October 27, 2001. What is the filing date
of the Rocket application absent any Postal Service Emergency?
(A) October 12, 2001 (B) October 13, 2001 (C) October 19, 2001 (D) October 22, 2001 (E) October 27, 2001
- Joint inventorship is based on conception only, not reduction to practice. Rocket
conceived of the basic titanium ball and Torpedo came up with the laces. B is the
answer. - Bizarre macabre facts. A PTO specialty. An estate rep. can sign for Rocket since
Paper America is completely out of the picture. - Express Mail “date in” is the filing date. Answer D.
- Patentee, Iam Smarter, filed and prosecuted his own nonprovisional patent
application on November 29, 1999, and received a patent for his novel cellular phone on
June 5, 2001. He was very eager to market his invention and spent the summer meeting
with potential licensees of his cellular phone patent. Throughout the summer of 2001, all
of the potential licensees expressed concern that the claim coverage that Smarter obtained
in his cellular phone patent was not broad enough to corner the market on this
technology, and therefore indicated to him that they feel it was not lucrative enough to
meet their financial aspirations. By the end of the summer, Smarter is discouraged. On
September 5, 2001, Smarter consults with you to find out if there is anything he can do at
this point to improve his ability to market his invention. At your consultation with
Smarter, you learn the foregoing, and that in his original patent application, Smarter had a
number of claims that were subjected to a restriction requirement, but were nonelected
and withdrawn from further consideration. You also learn that Smarter has no currently
pending application, that the specification discloses Smart’s invention more broadly than
he ever claimed, and that the claims, in fact, are narrower than the supporting disclosure
in the specification. Which of the following will be the best recommendation in
accordance with proper USTPO practice and procedure?
(A) Smarter should immediately file a divisional application under 37 CFR
1.53(b) including the nonelected claims that were subjected to a restriction
requirement in the nonprovisional application that issued as the patent.
(B) Smarter should file a reissue application under 35 U.S.C. § 251, including
the nonelected claims that were subjected to the restriction requirement in
the nonprovisional application that issued as the patent.
(C) Smarter should file a reissue application under 35 U.S.C. § 251,
broadening the scope of the claims of the issued patent, and then file a
divisional reissue application presenting only the nonelected claims that
were subjected to a restriction requirement in the nonprovisional
application which issued as the patent.
(D) Smarter should simultaneously file two separate reissue applications under
35 U.S.C. § 251, one including broadening amendments of the claims in
the original patent, and one including the nonelected claims that were
subjected to a restriction requirement in the nonprovisional application
which issued as the patent.
(E) Smarter should file a reissue application under 35 U.S.C. § 251 on or
before June 5, 2003, broadening the scope of the claims of the issued
patent.
ANSWER: (E) is the correct answer. 35 U.S.C. § 251. The reissue permits Smarter to broaden the claimed subject (A) is incorrect. There must be copendency between the divisional application and the original application. 35 U.S.C. § 120. (B) This is incorrect, as an applicant’s failure to timely file a divisional application while the original application is still pending is not considered to be an error correctable via reissue, In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977). (C) This is incorrect, as an applicant’s failure to timely file a divisional application while the original application is still pending is not considered to be an error correctable via reissue, Id., including a divisional reissue application. MPEP § 1402. (D)
This is incorrect, as an applicant’s failure to timely file a divisional application while the original application is still pending is not considered to be an error correctable via reissue, Id.
- In 1995 Patent Agent filed a U.S. patent application containing five claims
(Application 1). All five claims are fully supported under 35 U.S.C. § 112 by the
disclosure of Application 1. In 2000, Patent Agent filed a U.S. patent application
(Application 2) that was a continuation- in-part of Application 1. Application 2 adds new
subject matter to the disclosure of Application 1, and ten additional claims. Of the fifteen
claims in Application 2, claims 1-5 are exactly the same as Application 1, claims 6-10 are
fully supported under 35 U.S.C. § 112 by the disclosure of Application 1, and claims 11-
15 are fully supported under 35 U.S.C. § 112 only by the newly added subject matter of
Application 2. The effective filing date for claims in Application 2 is:
(A) 1-15 is 2000.
(B) 1-15 is 1995.
(C) 1-10 is 1995.
(D) 11-15 is 2000.
(E) (C) and (D).
ANSWER (E) The characterizing feature of a CIP is multiple filing dates. This question again
illustrates that the PTO wants you to know this feature. C and D set forth that the
claims are split between the two applications. Easy question if you remember the
CIP axiom of multiple filing dates. (By the way it also has multiple 102(e) dates
as a reference, but we’ll save that for another day!)
- Applicant Einstein files a patent application on November 26, 1999, that claims a new type of football pads. Prosecution is conducted and the application issues as a patent to Einstein on April 3, 2001. A competitor, Weisman, who has been making and selling football pads since April of 1998, learns of Einstein’s patent when Einstein approaches him on May 3, 2001, with charges of infringement of the Einstein patent. Weisman makes an appointment to see you to find out what he can do about Einstein’s patent, since Weisman believes that he is the first inventor of the claimed subject matter. At your consultation on May 17, 2001, with Weisman, you discover that Weisman widely distributed printed publications containing a fully enabling disclosure of the invention and all claimed elements in the Einstein patent. Weisman used the printed publication for marketing his football pads in April of 1998. Weisman explains that he wishes to avoid litigation. Which of the following is a proper USTPO practice and procedure that is available to Weisman?
(A) Weisman should file a petition to correct inventorship under 37 CFR 1.324 in the patent, along with a statement by Weisman that such error arose without any deceptive intention on his part, requesting that a certificate of correction be issued for the patent under 35 U.S.C. § 256, naming the correct inventive entity, Weisman.
(B) Weisman should file a reissue application under 35 U.S.C. § 251, requesting correction of inventorship as an error in the patent that arose or occurred without deceptive intention, wherein such error is corrected by adding the inventor Weisman and deleting the inventor Einstein, as well as citing Joe Weisman’s April 1998 printed publication for the football pads as evidence that Weisman is the correct inventor.
(C) Weisman should file a prior art citation under 35 U.S.C. § 301, citing the sales in April 1998 of football pads, and explain the pertinency and manner of applying such sales to at least one claim of the Einstein patent.
(D) Weisman should file a request for ex parte reexamination of the Einstein patent under 35 U.S.C. § 302, citing the April 1998 printed publication of football pads in, and explain the pertinency and manner of applying such prior art to at least one claim of the Einstein patent.
(E) Weisman should file a request for inter partes reexamination of the Einstein patent under 35 U.S.C. § 311, citing public use of the football pads in April 1998, and explain the pertinency and manner of applying such prior use to at least one claim of the Einstein patent.
ANSWER: (D) is correct. It is the only answer that proposes to use a practice and procedure that is available to Einstein. 35 U.S.C. § 302. (A) This is incorrect because a statement by the currently named inventor as required by 37 C.F.R. § 1.324(b)(2) and the fee required by 37 C.F.R. § 1.20(b0 have not been filed. (B) This is incorrect, as in A.F. Stoddard & Co. v. Dann, 564 F.2d 556, 567 n.16, 195 USPQ 97, 106 n.16 (D.C. Cir. 1977) wherein correction of inventorship from sole inventor A to sole inventor B was permitted in a reissue application, does not apply here, as a reissue application can only be filed by the inventor(s) or assignee(s). See MPEP § 1412.04. (C) This answer is incorrect because it refers to sales, as opposed to patents or printed publications. (E) The option of requesting inter partes reexamination is not available in this scenario, as the patent in question issued from an original application which was filed prior to the critical date of November 29, 1999. Only patents which issued from original applications filed in the United States on or after November 29, 1999, are eligible for inter partes reexamination (37 C.F.R. § 1.913).
Person A sold the hair gel since 98 and used a printed ad in 98 describing the hair gel. In 2002 Person B obtained a patent, applied for in 99 (on a date more than a year after sales started for person A), and sued Person A for infringement. Person A goes to a patent attorney to determine what they can do.
(A) Ex Parte Reexam (B) Interpartes Reexam (C) Reissue (D) Certificate of correction (E) Petition
(A) Ex Parte Reexam,
Note that for apps filed on/after Sept. 16, 2011 but before Sept. 16, 2012, the standard for inter parte re-examination has changed from the requestor having to establish a Substantial New Question (SNQ) of patentability to now having to establish a likelihood that the requestor will win the re-exam proceeding for at least one claim. The SNQ standard still applies for ex parte requests for apps filed within this period.
The USPTO OED website says these materials may be tested on the exam on/around Jan. 31!
Note: For apps filed after Sept. 16, 2012, all requests for inter parte re-exams will not be honored. But I don’t think this bit of info will be on the exam until after that date anyway.
