Exam 2 Flashcards
**Question 1. ** Which of the following qualify as prior art under 102(a) and are not subject to an exception under 102(b)?
(A) A sale by the inventor more than one year before the filing of an application.
(B) A public use by the inventor within one year of filing an application.
(C) A publication by the inventor within one year of filing an application.
(D) A publication by an associate of the inventor of the inventor’s work within one year of filing an application.
(E) All the above qualify as prior art.
(A) is correct. A sale, regardless of by whom, more than one year before the filing date are unavoidable prior art. Uses and sales within one year of the filing date are not prior art only if they are made by the inventor, either directly or indirectly.
Question 2. Which of the following sections of 102 can be addressed using a declaration filed under 37 CFR 1.130?
(A) 102(a)(l)
(B) 102(a)(2)
(C) 102(b)
(D) 102(c)
(E) Both (A) and (B) above.
(E) is correct. Prior Art under both 102(a) (1) and (2) can be disqualified under 102(b) using affidavits submitted under 37 CFR 1.130. 102(b) describes what is eligible for disqualification and 102(c) describes the qualifying joint venture.
Question 3. Which of the following is prior art under 102 ?
(A) A patent issued one day before the filing date of the application being examined.
(B) A publication reaching subscribers one day before the application is filed.
(C) A sale made one week before the application is filed.
(D) A public demonstration of the invention one month before filing.
(E) All of the above.
(E) is correct. Any publication, patent, public use, or sale, anywhere on earth, before the earliest filing date of an application is prior art.
Question 4. Which of the following sections of 102 include an exclusion or disqualification for an “offer for sale or a public use” by the inventor made within one year of the filing of an application?
(A) 102(a)(l)
(B) 102(b)(l)
(C) 102(b)(2)
(D) 102(c)
(E) 102(a)(2)
(B) is correct. 102(b)(l) is the statutory section that can disqualify a prior sale or use by the inventor as long it was within one year of their earliest filing date.
Question 5. Which of the following sections of 102 include “or otherwise available to the public” before the filing date?
(A) 102(a)(l)
(B) 102(b)(l)
(C) 102(b)(2)
(D) 102(a)(2}
(E) 102(a)(l) and 102(a)(2)
(A) is correct because 102(a) specifically says: “or otherwise available to the public.”
Question 6. 102(d) requires that
(A) a U.S. patent may be used as prior art under 102(a)(2) as of its earliest effective filing date.
(B) a U.S. published application may be used as prior art under 102(a)(2} as of its earliest effective filing date.
(C) a published PCT that designates the U.S. may be used as prior art under 102(a)(2) as of its earliest effective filing date, including a foreign priority date.
(D) a foreign patent may be used as prior art as of its earliest effective filing date.
(E) (A), (B), and (C).
(E) is correct. Only a U.S. patent or published application and/or a published PCT that designates the U.S. can be used as 102(a)(2) prior aii in accord with 102(d).
Question 7. To create an exception to prior art, 102(b)(2} requires:
(A) that the prior-filed application be created from disclosure from the inventor.
(B) that the prior-filed, third-party application filing date be pre-dated by a disclosure by the inventor.
(C) that the prior-filed application be commonly owned by the same entity as the current filing.
(D) all of (A), (B), and (C) above.
(E) any one of (A), (B}, or (C) above.
(E) is correct is correct because any one of (A), (B), or (C) qualifies for the 102(b)(2) exception. (D) is wrong because these elements are separately applied.
Question 8. Which of the following qualify as prior art under pre-AIA 102?
(A) An offer for sale of the rights to the invention.
(B) An offer for sale of the invention in Japan.
(C) An abandonment of the invention.
(D) An unpublished Japanese application.
(E) A confidential disclosure to a potential licensee.
(C) is c01Tect because an abandonment of the invention is prior aii. Pre AIA 102(c) says: “A person is entitled to a patent unless - he has abandoned the invention.”
(A) is incorrect because the offer for sale of the rights to an invention is not a prior art event under pre-AIA 102.
(B) is incorrect because offers for sale of the invention in Japan are not prior a.ii events under pre-AIA 102. To be prior art under pre-AIA 102(b), an offer for sale must occur in the U.S.
(D) is incorrect because an unpublished Japanese patent application would not qualify as prior art under any pre-AIA 102 section.
(E) is incorrect because a confidential disclosure to a potential licensee would not qualify as prior art under any pre-AIA 102 section.
Question 9. John Key invented a new and unique air balloon in Canada in 2018. He reduced the invention to practice in Canada and filed a nonprovisional U.S. application on June 14, 2019. In May of 2018, he sold a few of the balloons in Canada. Which of the following sections of 102 bar patentability?
(A) 102(a)(l)
(B) 102(a)(2)
(C) 102(b)(l)
(D) 102(c)
(E) None of the above.
(A) is correct because, on these facts, the sales in Canada are more than one year before the earliest filing date and will prevent John from obtaining a patent.
Facts: John Key invented a new and unique air balloon in Canada in 2018. He reduced the invention to practice in Canada and filed a nonprovisional U.S. application on June 14, 2019. In May of 2018, he sold a few of the balloons in Canada.
Question 10. In addition to the facts of Question 9, John also published a catalog in Canada fully describing the balloon in May, 2018. Based on these additional facts, which of the following sections of 102 bar patentability?
(A) 102(a)(1)
(B) 102(a)(2)
(C) 102(b)
(D) 102(c)
(E) None of the above.
(A) is correct because the invention was fully described in a published catalog in May 2018, which was more than 12 months before John filed a U.S. patent application.
Facts: John Key invented a new and unique air balloon in Canada in 2018. He reduced the invention to practice in Canada and filed a nonprovisional U.S. application on June 14, 2019. In May of 2018, he sold a few of the balloons in Canada.
Question 11. In addition to the above facts of Questions 9, John filed a patent application in Canada in April of 2018, which issued as a Canadian patent in December 2019. John now believes his previously filed nonprovisional patent application is defective beyond repair and wants to file a new nonprovisional patent application in the U.S. that does not claim priority to the previously filed U.S. nonprovisional application. Which of the following sections 102 bar patentability as of today, March 1, 2020, based only on the prior Canadian filing?
(A) 102(a)(1)
(B) 102(a)(2)
(C) 102(c)
(D) 102(b)
(E) None of the above.
(E) is correct. The prior Canadian patent is his own disclosure within one year of his U.S. filing date and can be disqualified as prior art under 102(b)(l).
Facts: John Key invented a new and unique air balloon in Canada in 2018. He reduced the invention to practice in Canada and filed a nonprovisional U.S. application on June 14, 2019. In May of 2018, he sold a few of the balloons in Canada.
Question 12. In addition to the above facts of Question 9, a U.S. patent issued to Jones in August 2018, which was filed in 2016 and which fully describes, but does not claim, the balloon. Based on these additional facts, which of the following sections of 102 bar patentability based on the Jones filing?
(A) 102(a)(l)
(B) 102(a)(2)
(C) 102(b)
(D) 102(c)
(E) None of the above.
(B) is correct because the Jones patent was filed in 2016. The Jones patent becomes prior art as of the filing date, which is a date that John cannot get behind.
Question 13. Which of the following sections of 102 can be the basis for a provisional rejection?
(A) 102(a)(1)
(B) 102{b)
(C) 102(a)(2)
(D) 102(c)
(E) (A) and (C) above.
(C) is conect because a provisional rejection can only be made pursuant to 102(a)(2). It is provisional in nature because a 102(a)(2) date does not exist unless a patent application has published or a patent has issued. If there is a common owner or common inventor, then the patent examiner may issue a provisional 102(a)(2), which is a notice that once a 102(a)(2) date exists, it will be used to reject the claim or claims at issue.
(A) , (B), (D) and (E) are incorrect because under these provisions, there is no ability or justification to issue a provisional or preliminary rejection.
The answer to each of Questions 14 - 20 are based on the facts in the following paragraph. You are to consider each of the questions independently of the others.
Mary Rose can prove she conceived and reduced her invention to practice respectively on February 27, 2017 and on August 20, 2017 in the United States. On March 14, 2018 she filed a provisional application completely describing her invention and on March 13, 2019 she filed a utility application in the United States claiming the benefit of her provisional filing.
For each of the following facts, which section, if any, of 101 or 102(a) applies and is not subject to an exception under 102(b)?
Question 14. Unbeknownst to Mary, General Mega Corporation filed a patent application in Belgium on September 30, 2017, which issued on March 15, 2018.
(A) 102(a)(l)
{B) 102(a)(2)
(C) 102(c)
(D) 102(d)
(E) None of the above.
(E) is correct because, based on these facts, there is no valid rejection
that can be issued. The Belgian patent/application would not be prior art until it is published or issued. Mary can get behind the March 15, 2018 issue date of the Belgium patent with a provisional patent application filed on March 14, 2018.
The answer to each of Questions 14 - 20 are based on the facts in the following paragraph. You are to consider each of the questions independently of the others.
Mary Rose can prove she conceived and reduced her invention to practice respectively on February 27, 2017 and on August 20, 2017 in the United States. On March 14, 2018 she filed a provisional application completely describing her invention and on March 13, 2019 she filed a utility application in the United States claiming the benefit of her provisional filing.
For each of the following facts, which section, if any, of 101 or 102(a) applies and is not subject to an exception under 102(b)?
Question 15. Mary’s invention was used in public, by Smith, who learned about the invention from Mary, in Maine without Mary’s permission on August 23, 2017.
(A) 102(a)(1)
(B) 102(b)
(C) 102(a)(2)
(D) 102(c)
(E) None of the above.
(E) is correct because, based on these facts, there is no valid rejection that can be issued. Here, Smith used the invention publicly but not until after obtaining that information from Mary. Hence, since the use was within one year of filing, and the information disclosed was obtained from the inventor, the use is subject to an exception under 102(b)(1).
