Exam 1 Flashcards
Your new client Mary Williams has come to you because she is dissatisfied with her previous agent. She has provided you with a copy of her application as filed on June 4, 2018. She is uncertain what, if anything, might have been done or received by her previous attorney. She said that her previous attorney hasn’t returned her phone calls for more than a year and his assistant told her that he was on an extended trip to Tibet for religious reasons.
Question 1. What is the first thing you should do to protect Mary’s interest at the least expense?
(A) Have Mary sign a Power to Inspect and obtain a copy of the Official Patent Office file as soon as possible.
(B) Write to the Committee on Enrollment and Discipline and point out that the previous attorney has violated the USPTO’s ethical requirements.
(C) File a letter at the USPTO today requesting that further action be suspended until you have obtained a copy of the file.
(D) File a substitute application and abandon the application filed June 4, 2018.
(E) Do nothing until the previous attorney has withdrawn from representation.
- (A) is correct. The question asks what is the “most appropriate” to assist the client. Since no information can be had from the previous attorney, the highest priority is to find out what, if anything, is happening in Mary’s application.
(B) is incorrect because it does not help the client, although it likely does satisfy your ethical obligation to alert the USPTO of unethical conduct by a fellow practitioner.
(C) is incorrect, but not as wrong as you might think. A suspension of an action can be obtained, but a suspension can only be obtained when the clock is running for the Patent Office to take action. When the clock is running on the applicant to respond, no suspension can be obtained. Because we do not know the procedural history, we do not know whether a suspension would be appropriate.
(D) is incorrect. It is never wise to file a substitute application. A substitute application would forfeit priority.
(E) is incorrect because the filing of a new power of attorney will automatically remove the previous attorney from the case. You do not need to wait for the previous attorney to withdraw.
Your new client Mary Williams has come to you because she is dissatisfied with her previous agent. She has provided you with a copy of her application as filed on June 4, 2018. She is uncertain what, if anything, might have been done or received by her previous attorney. She said that her previous attorney hasn’t returned her phone calls for more than a year and his assistant told her that he was on an extended trip to Tibet for religious reasons.
Question 2. It turns out that Mary’s application filed in June of 2018 was abandoned early in 2019, and a proper continuation filed under Rule 1.53(b). Before the parent was abandoned, a proper claim for foreign priority was made based upon an application filed in Canada on June 11, 2017. A certified copy of the Canadian application was filed on December 14, 2018. What is the minimum action you must take to preserve the foreign priority in the continuation application?
(A) No action needs to be taken because a proper claim was made in the parent application.
(B) A proper claim must be made in the continuation for the benefit of the Canadian priority and a certified copy of the Canadian application must be filed in the continuation.
(C) A proper claim must be made in the continuation for the benefit of the Canadian priority, but a non-certified copy of the Canadian application can be filed in the continuation, because a certified copy is already in the parent file.
(D) A claim must be made in the continuation for the benefit of the Canadian priority and the application containing the certified copy of the Canadian application must be identified.
(E) A proper claim must be made in the continuation for the benefit of the Canadian priority and the Canadian Patent Office must be requested to send a certified copy of the Canadian application to the USPTO.
- (D) is correct. Where the benefit of a foreign filing date based on a foreign application is claimed in a later-filed application (i.e., continuation, continuation-in-part, division) and a certified copy of the foreign application as filed, has been filed in a parent or related application, it is not necessary to file an additional certified copy in the later application. The applicant, when making such claim for priority, may simply identify the application containing the certified copy.
(A) is incorrect because a claim to priority must also be made in the continuation. The claim for priority must be filed within the later of four months from the actual filing date of the application or 16 months from the filing date of the prior foreign application.
(B) is incorrect because another certified copy does not need to be filed.
(C) is incorrect because there is no provision for filing a non-certified copy of the prior foreign application.
(E) is incorrect because it oversimplifies the matter. Remember, the question asks “what is the minimum action.” The requirement for a certified copy of the foreign application to be filed within the time limit will be satisfied if: (1) the foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement; (2) the claim for priority is presented in an application data sheet; (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed; and (4) the applicant files a request in a separate document that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy. See 37 CFR l.55(h).
Your new client Mary Williams has come to you because she is dissatisfied with her previous agent. She has provided you with a copy of her application as filed on June 4, 2018. She is uncertain what, if anything, might have been done or received by her previous attorney. She said that her previous attorney hasn’t returned her phone calls for more than a year and his assistant told her that he was on an extended trip to Tibet for religious reasons.
Question 3. Mary was, in fact, not the only inventor listed on the parent application. Her ex husband George was listed as a co-inventor. He made a small contribution, which was set forth in one claim - claim 29. George is now demanding that he receive half of all monies received. Mary wants George out of her life and out of her patent application. Which of the following is true?
(A) George must remain as a co-inventor because inventorship can be changed only if a mistake has been made.
(B) George may be deleted as a co-inventor under 37 CFR 1.48(a) if his contribution is no longer being claimed.
(C) George cannot properly be a co-inventor because George made a contribution to only one claim.
(D) A second continuation must be filed to delete George as an inventor.
(E) An amendment deleting an inventor under 37 CFR 1.48(b) must be signed by the inventor deleted.
- (B) is correct. Do not read too much into this question. Ethically, if you represent both Mary and George, you may not be able to take action to remove George because such action would be adverse to George and presumably against his wishes. In this situation, you likely have to advise both Mary and George that they each need to seek alternative counsel.
This question is intended to be about inventorship, not ethical responsibilities. Inventorship is based on claims. An inventor is one who has contributed conception to at least a single claim. Here, George has contributed conception to one claim, so he is rightfully listed as an inventor. If the claim that George contributed to is eliminated, then George is no longer an inventor. This can be accomplished and will be accomplished pursuant to Rule 48(a).
(A) is incorrect because inventorship is dependent on claims. There is no requirement that claims only be canceled for a particular reason, and likewise no requirement that inventors can be added or deleted only if a mistake is made.
(C) is incorrect because inventors only need to contribute conception to a single claim.
(D) is incorrect. Although a nice compromise here may ultimately end up with George filing a continuation to proceed to protect the claim on which he is an inventor, the filing of a continuation is not a prerequisite to removing George’s claim and/or removing George as an inventor. Indeed, a continuation can be filed at any time during the pendency of the underlying parent application (i.e., before the application goes abandoned or issues).
(E) is incorrect because Rule 48(b) requires either an oath or declaration to be filed for added inventors, or for a substitute statement to be filed in lieu of an oath/declaration when an inventor is added.
Your new client Mary Williams has come to you because she is dissatisfied with her previous agent. She has provided you with a copy of her application as filed on June 4, 2018. She is uncertain what, if anything, might have been done or received by her previous attorney. She said that her previous attorney hasn’t returned her phone calls for more than a year and his assistant told her that he was on an extended trip to Tibet for religious reasons.
Question 4. In addition to the filing of June 11, 2017 in Canada, Mary filed an application with the same disclosure in Canada on June 1, 2017, but withdrew the application three days later before it was published. No claim for priority was ever made based on the June 1, 2017, Canadian filing. Which of the following is true?
(A) Mary cannot take the benefit of priority from the June 11, 2017 foreign filing in Canada.
(B) Mary cannot take the benefit of priority from either the June 1, 2017 or June 11, 2017 filing.
(C) Mary can take the benefit of priority from the foreign filing in Canada on June 1, 2017.
(D) Mary can take the benefit of priority from the foreign filing in Canada on June 11, 2017.
(E) Mary cannot take the benefit of the filing in Canada because the filing in Canada was not the first filing in a foreign country.
- (D) is correct. Generally speaking, a priority claim must be made to the first filed foreign application, not merely any foreign filing within 12 months. So you have only 12 months from the first foreign filing, as a general rule, within which to claim priority. However, 35 USC 119(c) provides a peculiar and highly specific variation, which in the past has been tested. Priority may be claimed based upon a subsequent regularly filed application in a foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and has not served, nor thereafter shall serve, as a basis for claiming a right of priority. The rule is particular, however; it applies here because Mary filed in Canada, withdrew the Canadian application prior to publication and refilled in Canada, thus allowing her to claim priority from the second Canadian filing date. This rule would not have applied if the fact pattern were even slightly different. For example, if Mary filed in Canada, withdrew the Canadian application prior to publication and then filed in any country other than Canada, the priority claim would have to relate to the first-filed foreign filing. Thus, we say that to claim priority from the second-filed application, the following formula must be satisfied: File in Country A, withdraw in Country A and subsequently refile in Country A. This file, withdraw and refile, all in Country A, allows the subsequent foreign filing to be the date that establishes the start of the 12-month period within which to claim priority.
Your new client Mary Williams has come to you because she is dissatisfied with her previous agent. She has provided you with a copy of her application as filed on June 4, 2018. She is uncertain what, if anything, might have been done or received by her previous attorney. She said that her previous attorney hasn’t returned her phone calls for more than a year and his assistant told her that he was on an extended trip to Tibet for religious reasons.
Question 5. Mary wants to file a new application directed to an improvement and she wants
this new application to expire as far in the future as possible, while costing the least amount of money to file. This improvement was fully described in a magazine, which was published almost a year ago. The most appropriate action would be:
(A) Prepare a continuation-in-part application to replace the continuation now on file.
(B) Prepare and file a new nonprovisional application.
(C) Advise Mary to delay filing the application on the improvement until there is infringement.
(D) File a provisional application before the one year anniversary of the publication.
(E) Amend the continuation to include the improvement.
- (D) is correct. The first thing to notice is that an application must be filed quickly because the invention was fully disclosed in a publication nearly one year ago. Waiting until there is infringement (answer C) is a recipe for never receiving a patent. Regardless of whether we are dealing with pre-AIA or AIA, something needs to be filed within one year of disclosure to have any chance of obtaining a patent in the U.S.
Next, the expiration date for a patent runs from the date a U.S. nonprovisional patent application is filed, not the filing date of the provisional. See 35 U.S.C. 154(a)(3). Thus, given the call of the question, the most appropriate response is to file a provisional patent application. Filing a provisional patent application will cost the least (i.e., a much lower filing fee) and the patent term will not begin to run until the subsequent filing of a nonprovisional patent application.
Answers (A) and (B) would start the term clock running immediately. Answer (E) is prohibited because it suggests you would add new matter (i.e., the new improvement) to a previously filed application, which is never allowed.
- A provisional U.S. patent application covering a unique chair was filed in the U.S. Patent Office on March 14, 2010. The application claims priority from a U.K. application filed April 30, 2009. The U.K. application was published on November 23, 2010. A Utility application claiming priority from the provisional application was filed in the U.S. Patent Office on September 25, 2010. An official action in the U.S. application was sent to the applicant on November 3, 2011 setting a shortened statutory period of three months to respond. No response was filed. A proper continuation of the utility application was filed on December 14, 2011, and issued as a U.S. patent on July 5, 2013. When will the patent expire? Please assume all maintenance fees will be timely paid and no additional patent term is due to the applicant.
(A) December 14, 2031.
(B) July 5, 2030.
(C) March 14, 2030.
(D) April 30, 2029.
(E) September 25, 2030.
- (E) is correct. First, before delving into the answer, notice that a
provisional application cannot take any priority from the U.K. application (see second sentence of the question). This mistaken claim of priority does not impact the question, but you should be aware that provisional patent applications cannot claim priority to anything. A provisional must start the process, not claim benefit of anything that came earlier. (You can file sequential provisionals, which is something we will address in later questions and lectures.)
Next, patent term is governed by the nonprovisional filing date, which was September 25, 2010. The question asks you to assume the general term rule applies without any additional patent term and that all maintenance fees were paid. That means the patent term end date would be 20 years from the filing of the nonprovisional patent application.
Thus, the patent term will run on September 25, 2030.
- Shawn Slippery was granted a design patent directed to a troll design on May 23, 2015. After many unsuccessful attempts, he managed to convince a young woman he met in a bar that his patent was valuable and she agreed to buy the patent for $20,000 in cash, which she had secreted on her person. She gave Shawn the money, and Shawn wrote the following on a napkin in the bar, which Mary stuffed in her purse.
“I, Shawn Slippery hereby assign all rights in my troll design patent D 234,781 to Mary Wistful.
Shawn Slippery June 3, 2015”
Mary came to your office today and told you she was jogging yesterday with a friend who told her that Shawn had been trying to sell the same patent to others.
While she has yet to use the patent in any way, she believes that someday it may be valuable. You should advise her that
(A) Every patent that successfully survives reexamination is strengthened by the experience and a reexamination should be filed.
(B) The napkin cannot be recorded because it has to be on A4 paper and must be signed by Mary as well.
(C) The napkin should be copied onto regular paper and that paper recorded.
(D) She should keep her ears open and advise you immediately if Shawn sells the invention again.
(E) She should immediately execute an assignment to you which you will prepare and which you will then record.
- (C) is correct. See 37 C.F.R. 3.24(b). First, can you record a bar napkin? The answer is no, but only because the napkin is not on the right size paper. You can record either on 8 ½ by 11 inch or A4 paper. There is no requirement that the original be recorded, so merely copy the bar napkin onto the right size paper and record the copy. Thus, answer (C) is correct.
(A) may be a correct statement insofar as reexamination can strengthen a patent, but it is wholly irrelevant to the question presented and would be peculiar advice to give when Mary merely need record a copy of the napkin to perfect rights.
(B) is incorrect because it is too broad. It is true that the napkin cannot be recorded, but a copy of the napkin on proper size paper can be recorded.
(D) may be a correct statement in that this advice would be wise because you may want to affirmatively notify interested buyers that Mary owns the patent, but recording a copy of the napkin is far superior.
(E) is incorrect. Never choose the unethical answer on this exam. It will never be correct.
- Your client John K. Flier filed a provisional application on October 13, 2017 on an invention relating to an improved cup holder. A nonprovisional patent application claiming priority to the provisional was filed on September 23, 2018. While you were on vacation in Idaho, John called your office and insisted that an application in Mexico be filed immediately and the Mexican application was filed on September 30, 2018. John now asks you whether a Foreign Filing license should have been obtained prior to the filing in Mexico, and, if so, what should be done now. Your advice should be:
(A) A Foreign Filing License was granted by the passage of six months following the filing of the provisional application.
(B) A Foreign Filing License is not required for cup holders.
(C) While a Foreign Filing License is technically required, the law is not enforced and can be ignored.
(D) A retroactive Foreign Filing License is required.
(E) The application should be abandoned.
- (A) is correct. MPEP 140. A foreign filing license is required whenever the invention was conceived in the U.S., so (B) and (C) are incorrect. A foreign filing license can either be granted expressly or by operation of law through the passage of six months’ time after filing a U.S. patent application. Here, a provisional patent application was filed approximately 50 weeks prior to the filing of the Mexican patent application. Thus, as long as a secrecy order has not been issued, John would have a foreign filing license. The question mentions no secrecy order so he is good to go. Thus, you do not need a retroactive foreign filing license (answer D). Answer (E) is incorrect because no rules have been violated.
- A U.S. application was filed on February 19, 2018, listing Juan Fernandez and Sally O’Hara as co-inventors. Juan had conceived the ideas set forth in the apparatus claims 14-17. Sally was solely responsible for the concepts in the method claims 1-13. In response to a restriction requirement the method claims were cancelled with the intent of pursuing those claims in a divisional application. You should also:
(A) File an amendment canceling Juan as co-inventor.
(B) Take no further action since the inventorship was correct when filed.
(C) File a petition under 37 CFR 1.48(a) to correct inventorship and satisfy the other requirements of the section.
(D) Delete Sally as a co-inventor by filing an Application Data Sheet in accordance with 37 C.F.R. 1.76, together with the required fee.
(E) File an amendment resubmitting cancelled claims 1-13.
- (D) is correct. See 37 C.F.R. 48(a). Inventorship is changed pursuant to Rule 48(a), which requires an application data sheet that identifies each inventor by his or her legal name and payment of the fee.
(A) is incorrect because you do not delete inventors in an Amendment.
(B) is inc01Tect because while inventorship was c01Tect at the time of filing, inventorship must reflect the claims in the patent application. When the claims change, and those changes affect inventorship, then a connection via Rule 48 and an ADS must be made.
(C) is incorrect because a petition is no longer required.
(E) is incorrect because resubmitting the canceled claims defeats the purpose of having elected to proceed with the apparatus claims. The patent examiner will not allow you to reassert claims elected out of the application.
- Herman and June Dulets are siblings and are listed as the co-inventors of a U.S. patent application filed February 19, 2018. They have just told you that Herman solely conceived of what was claimed and June reduced the invention to practice. You should advise them:
(A) The inventorship is correct.
(B) If anyone ever asks, tell them that both siblings are in fact co-inventors.
(C) You must file a petition under 37 CFR 1.48(a) to correct inventorship by deleting June and satisfy the other requirements of the section.
(D) You must file a petition under 37 CFR 1.48(b) to correct inventorship and satisfy the other requirements of the section.
(E) Delete June as a co-inventor by filing an Application Data Sheet in accordance with 37 C.F.R. 1.76, together with the required fee.
- (E) is conect. See 37 C.F.R. 48(a). Inventorship is changed pursuant to Rule 48(a), which requires an application data sheet that identifies each inventor by his or her legal name and payment of the fee.
(A) is inc01Tect because inventorship is not correct. Those who are engaged in reduction to practice only are not inventors. Inventors must at least contribute conception to at least a single claim.
(B) is inconect. The facts will come out eventually if it matters. There is no need to engage in this type of activity when simply fixing inventorship via ADS will cure the problem.
(C) and (D) are both incorrect because a petition is no longer required.
- Which of the following are true with respect to an Application Data Sheet (ADS)?
(A) An ADS may be submitted in a provisional patent application, a nonprovisional patent application, or a national-stage patent application.
(B) An ADS must be titled “Application Data Sheet.”
(C) Information submitted in an ADS may be corrected or updated until payment of the issue fee.
(D) An application data sheet must be signed. An unsigned application data sheet will be treated only as a transmittal letter.
(E) All of the above are true.
- (E) is correct. See 37 C.F.R. 1.76. Each of (A) through (D) are true statements.
- Your client John filed a provisional application about six months ago on an improved Bunsen burner. Now today he tells you that he has an improvement to the invention that he wants to protect. Which of the following would be in accordance with current PTO rules and procedures?
(A) File a continuation application under Rule 1.53(b) of the provisional and add the second improvement by preliminary amendment filed with the continuation.
(B) File a second provisional directed to the second improvement.
(C) File an application under Rule 1.53(d) with a specification including both the original and the second improvement and making the required reference to the provisional.
(D) File a nonprovisional application directed to both the original and the second improvement and making the required reference to the provisional.
(E) (B) and (D)
- (E) is correct. Both (B) and (D) are correct.
With respect to (B), based on these facts, there is no reason why you could not file a second provisional patent application because you are still within 12 months of the first provisional patent application. If you file more than one provisional patent application, you would merely make a priority claim to each provisional patent application filed within
the 12 months preceeding the filing of a nonprovisional patent application.
With respect to (D), there is nothing wrong with adding a new embodiment to a newly filed nonprovisional patent application. The filing of this nonprovisional patent application would claim benefit to the provisional previously filed and add the improved version. Once the nonprovisional patent application is :filed, however, no additional new material could be added without also :filing another new nonprovisional patent application.
(A) is incorrect because you cannot file a continuation of a provisional patent application.
(C) is incorrect because 53(d) is for a CPA, which relates only to design patent applications.
- Which of the following statements about foreign priority is false?
(A) An inadvertent failure without deceptive intent to claim or perfect a claim for foreign priority can be cured by seeking a reissue.
(B) The priority period for design applications is six months.
(C) A translation submitted to establish foreign priority rights of an application not in English need not be sworn or in the form of a declaration.
(D) A translation must be submitted to perfect priority unless the certified copy is in English.
(E) Rather than submitting another certified copy of a priority document reference can be made to a document previously filed in another U.S. application.
- (D) is correct because it is false. Rule 55(g)(3) says that an English language translation is only required in three circumstances: (1) when the application is involved in an interference or derivation proceeding;
(2) when necessary to overcome the date of a reference relied upon by the examiner; or (3) when specifically required by the examiner.
The rest of the answers are all true statements.
- Property Rights statements to DOE and NASA:
(A) Must be filed in every application within three months after filing or one month after a Missing Statement Notice, whichever is longer.
(B) Must include a full statement of the facts surrounding the conception and making of the invention.
(C) Must be signed by the owner of the invention.
(D) Have a thirty day period for response which can be extended up to four months upon filing a petition and payment of the required fee.
(E) Can be signed by the agent or attorney.
- (B) is c01Tect. This is a look-up question. A look-up question is one that asks for a pinpoint piece of factual information. You can get these answers right quite quickly if you know where to look. Another example of such a question asked many years ago was “where do you send the request for international preliminary search report?” The question wanted the agency name and their street address.
But how do you know where to look it up? You absolutely must be familiar with what each chapter of the MPEP contains in terms of substance. If you are, you can go to the right chapter and look down the table of contents until a heading seems relevant. If it really is a look-up question, a heading will likely jump out at you as relevant. The answer is typically in the :first paragraph of that section. For this question, look to MPEP Chapter 100. (You should find MPEP 150.)
When facing a look-up question, you must not use the Index to the MPEP. The MPEP is extremely redundant and the index will point you in too many different directions, sending you off on a wild goose chase and eating up valuable minutes on Exam day.
- Which of the following statements is true?
(A) Correspondence filed in the Patent Office that 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.
- (C) is correct. See 37 C.F.R. 1.43 and 1.64. Inventors are those who contribute conception to at least a single claim. Someone who is legally incapacitated, for whatever reason (i.e., a minor, ward of the State, insane, etc.), can be an inventor. However, those who are not legally competent cannot execute documents, so whoever is in charge of handling their legal affairs will make the appropriate filings on their behalf.
(A) is incorrect because an original signature is not always required. In fact, it is not typically required. In this age of electronic filings, so-called “s signatures” are the rule. An s signature is typed, not signed.
(B) is incorrect. It is specifically permissible to assign a portion of the asset.
(D) is incorrect because amendments would carry over into the CPA.
(E) is incorrect because it is possible to use copyrighted drawings in a patent application. If you do, a proper copyright notice is required.
