mock final AIA Flashcards
1.
John Q. Public filed an application on June 4, 2005 directed to his new lawn sprinkler. After all the claims of his application were rejected by the examiner for the second time, he retains you to represent him and executes a proper power of attorney which you file. The final rejection setting a three month period for response was mailed from the Patent Office on April 5, 2006 and received by Mr. Public one week later. The examiner agreed to an interview which took place in late April. After consulting your client you decide both to file a Notice of Appeal and a response. The Notice of Appeal is filed on May 1, 2006, and a response is filed on July 13, 2006. You file an Appeal Brief on Monday, September 1, 2006 together with a two month extension and payment of the required fee. Today, August 26, 2008, your client and you decide that the claims now on appeal are too broad and unpatentable. Instead you want the examiner to consider narrower claims with details which are fully disclosed in the application as initially filed, but not claimed before. You should:
A
File an amendment and request that the Patent Trial and Appeal Board consider the new claims.
B File an amendment and a petition to have the application returned to the examiner to consider the new claims.
C File an amendment and a petition to have the application returned to the examiner to consider the new claims, and pay the required fee.
D File a petition to revive the application because the Appeal Brief was not filed timely and the application was abandoned.
E
File a continuation with the new claims and then subsequently abandon the parent application.
(E) is correct. The question explains that you are now on the appeal track, but that you also want the examiner to consider more narrow claims that, while supported in the initial filing, have not previously been claimed. At this point, you will not be able to amend the claims to have new claims considered. Thus, to get these new, narrower claims considered, you will need to file a continuation. Because you have determined that the claims on appeal are unpatentable, you cannot ethically continue to pursue those claims and would need to abandon the appeal. Although not a choice, you could also file a Request for Continued Examination (RCE) under Rule 114, because prosecution is now closed and you are on the appeal track. Notice also that the answer says ‘file a continuation and then abandon.’ The rule requires the continuation and the parent to be co-pending for at least one day.
(A) is incorrect because the Board will not consider new claims.
(B) and (C) are incorrect because you have insufficient grounds to reopen prosecution.
(D) is incorrect because the Appeal Brief was timely filed with a proper two-month extension request. Furthermore, (D) does not address the unpatentability of the claims on appeal or the desire to have narrower claims considered.
- Which of the following statements is not true?
A A proper showing of secondary considerations rebuts a prima facie obviousness rejection.
B An inventor may be excluded from participating in the prosecution of his or her own application if the assignee so wishes.
C Unless instructed otherwise, the Patent Office will send all further correspondence to the appointed attorney or agent of record.
D An Information Disclosure Statement (IDS) should be filed within two months from the filing of a provisional application.
E A reexamination can be filed up to six years after the patent expires.
D
D vs. E
(D) is correct because it is the only choice that is false. You do not file an Information Disclosure Statement (IDS) in a provisional patent application. There is no prosecution of a provisional patent application and, therefore, no duty to disclose prior art.
(A) is incorrect because it properly states that secondary considerations must be considered, if present, when making an obviousness rejection.
(B) is incorrect because it is a true statement: One or more assignees may conduct prosecution of a patent application as the applicant, or conduct prosecution of a supplemental examination or reexamination proceeding, to the exclusion of the inventor or previous applicant or patent owner.
(C) is incorrect because it is a true statement: In the absence of a correspondence address being provided that is different from that of the attorney/agent of record, the USPTO will communicate with the attorney/agent of record.
(E) is incorrect because the enforceability period of a patent lasts until 6 years after the patent has expired because the Statute of Limitations to bring a patent infringement action is 6 years. Thus, a reexamination can be filed at any time during the enforceability period of the patent.
3.
You are prosecuting an application in which the Patent Examiner rejected all of the claims as anticipated and set a three-month shortened period for response. The non-final action was dated June 3, 2012 and you received the action on June 12, 2012. On Monday September 5, 2012 you filed a proper response to the action using the Certificate of Mailing Procedure. On January 5, 2013 you receive a Notice of Abandonment from the Patent Office for failure to prosecute. Which of the following would be the most appropriate response to the notice:
A Promptly advise the Patent Office in writing that a response was mailed, and include a copy of your response and establish that the response was properly and timely mailed. B
Advise your client of the misfortune and explain that nothing can be done.
C File a petition to revive the application, include a copy of the response, and a petition to revive the application as unavoidably abandoned.
D Send the Patent Office another copy of the response.
E File an original copy of your response together with a four-month extension of time.
(A) is correct. The Office Action was dated June 3, 2012, which means the shortened statutory period expired on September 3, 2012. However, we know from the question that Monday was September 5, 2012, which means that September 3 was a Saturday. When a filing is due on a Saturday, Sunday or Federal holiday in the District of Columbia, the applicant has until the next day that the USPTO is open within which to timely file. Therefore, filing on Monday, September 5, 2012, was timely and the application was not abandoned. The USPTO made an error issuing a Notice of Abandonment. Also notice that this particular response could have been timely filed even on Tuesday, September 6, 2012, because the first Monday in September is a Federal Holiday (i.e., Labor Day).
4.
You are prosecuting an appeal to the Patent Trial and Appeal Board. After reading the Examiner’s Answer you are convinced the Examiner has misunderstood your arguments, and, that if he understood them properly, the application would be allowed. The answer merely repeated the rejections and arguments set forth in the Final Rejection. The most appropriate course of action would be to:
A File a Reply Brief and point out succinctly where the examiner has gone astray.
B File a Request for Reconsideration of the Final Rejection pointing out the examiner’s mistake together with a petition asking that the application be returned to the examiner for further reconsideration, and the required fee.
C File a CIP application with a preliminary amendment adding to the application the reasons setting forth why the examiner is wrong, and abandon the parent application.
D File a petition asking the Board to disregard the Examiner’s Answer as based upon incorrect information.
E Write to the Commissioner and ask that the examiner’s fitness be investigated.
(A) is correct. Applicants have a right to file a timely Reply Brief in response to an Examiner’s Answer. The Reply Brief must be filed within 2 months and can that time period only be extended for cause.
(B) is incorrect because you have insufficient grounds (1207.04, need to enter a new ground of rejection) to seek to reopen prosecution, and you cannot otherwise have the Board disregard the Examiner’s Answer.
(C) is incorrect because, to file a CIP, you would have to include new matter not previously disclosed and the question does not suggest that the applicant has any new matter to add. Furthermore, filing a CIP, or a continuation or RCE for that matter, would not address the issues on appeal. Because you can file a Reply Brief, you might as well and see if you can convince the Board that you are correct. There will be time later to file to keep the application from going abandoned.
6.
You prepare and file a patent application on January 24, 2012, one day before the first anniversary of a publication fully describing the invention. Unfortunately in the rush to file the application page 24 was omitted from the application. That page describes certain details which are set forth in dependent claims 4 and 5, but are not otherwise necessary to satisfy the requirements of 35 USC 112. A Notice of Omitted Items was mailed from the Patent Office on April 14, 2012. You advise the client of your error and, after expressing his view of your competence, the client instructs you to take the immediate action, which will best preserve her rights at the least expense. That action is:
A Immediately file a preliminary amendment with the missing page and ask that the application be given a filing date as of the date the preliminary amendment is filed.
B Telephone the examiner to explain your situation and ask him to insert page 24 into the Patent Office copy of the application.
C Do nothing, but tell the Patent Office that will be your course of action.
D Abandon the application and file a substitute.
E File a complete application with all pages today.
601.01(d) Application Filed Without All Pages of Specification
(C) is correct. You do not have to substantively respond to a Notice of Omitted Items, but if you are not going to substantively respond, you must at least notify the Patent Office that you will not be substantively responding. Failure to either substantively respond or notify the Patent Office that you will do nothing substantively will result in the application going abandoned.
(A) is incorrect. While you can file a preliminary amendment at any time prior to the patent examiner working on the First Office Action, you cannot add new matter in a preliminary amendment, which is what you would be trying to do by adding the missing page.
7.
Mary filed an application on May 6, 2010, which issued as a U.S. patent on March 6, 2012. After attempting to license her patent Mary concluded that the claims were invalid because of prior patents cited by the prospective licensee. The prospective licensee also pointed out that all the claims contained an unnecessary limitation. When is the last date that Mary can file a reexamination to submit claims, which will define over the prior art, and delete the unnecessary limitation:
A May 6, 2012.
B March 6, 2014.
C The reexamination can be submitted at any time prior to six years after expiration.
D March 6, 2013.
E None of the above.
(E) is correct. You cannot broaden claims in reexamination; therefore, the answer to the question is that Mary will never be able to do what she wants to do through reexamination. Had the question asked when is the last date that Mary could file a broadening reissue, the answer would be March 6, 2014, which is 2 years after the date the patent issued.
9.
Matt Johnson conceives of and reduces to practice an invention relating to an improved rugby ball in Germany on September 25, 2007. He files a patent application in Estonia on September 26, 2007, which is granted on September 3, 2009, but the patent file was not available to the public and published until December 23, 2010. During 2008, Johnson sold a few of the balls to various of his friends in Europe and on October 12, 2008 sold all rights in the invention to your client JHY Corporation, the leading manufacturer of rugby balls in the world. Your client today, August 28, 2012, wants to file a U.S. patent application directed to the Johnson invention, which tests have shown to be a possible winner in the marketplace.
Which of the following sections of 35 USC 102 bar patentability of the Johnson invention? A 102(a). B 102(b). C 102(d). D 102(b) and 102(d). E None of the above.
(D) is correct. The first thing to notice is that this question requires application of pre-AIA 102. Under pre-AIA 102, this is a classic example of a 102(d) rejection. All four criteria have been met to satisfy 102(d) – we have the same inventor, the same invention, a foreign patent has already issued, and it is too late to claim priority back to the foreign filing. Notice also, however, that we have a 102(b) problem as well.
- McCoy conceives of and reduces to practice an invention relating to an improved masonry tool in Canada on September 25, 2008. He files a patent application in China on September 26, 2008, which is granted on September 3, 2010, but the patent file was not available to the public and published until December 23, 2010. During 2009, McCoy sold a few of the tools to various of his friends in Asia and on October 12, 2009 sold all rights in the invention to Federation Planet Enterprises (FPE), a leading manufacturer of masonry tools. Today is August 28, 2013, and FPE wants to file a U.S. patent application directed to the McCoy invention.
Which of the following sections of 35 USC 102 bar patentability of the McCoy invention? A 102(a). B 102(b). C 102(d). D 102(b) and 102(d). E None of the above.
first identify whether its AIA or pre-AIA
(A) is correct. You probably notice that this question is nearly identical to the previous question. Notice, however, that based on the date (i.e., “Today is August 28, 2013”) you will need to apply AIA 102. Under AIA 102, the only section that can be used to reject an application is 102(a). Under these facts, the rejection would be under AIA 102(a)(1), which prohibits a patent when the “claimed invention was patented… before the effective filing date of the claimed invention….”
11.
Hubert Davis is the inventor of a set of ear plugs that actually, and truly, blocks out even the most annoying noises. Davis filed a non-provisional patent application on October 1, 2011, and was ultimately awarded his first patent on April 10, 2013. Prior to the issuance of the patent, Davis filed a continuation pursuant to Rule 1.53, which was accomplished on March 17, 2013. A First Action in the continuation was mailed on July 27, 2013. Davis quickly responded and achieved a Notice of Allowance on September 15, 2013, with this second patent issuing on November 28, 2013.
Mike Johnson would like to challenge these patents owned by Davis, but would prefer to avoid all out litigation in the district courts. Johnson walks into your office on December 19, 2013. What recommendation do you make? A Post-grant review can be requested against both the first and the second patent because both were issued after March 16, 2013. B Post-grant review can be requested against both the first patent and the second patent because both were issued after September 16, 2012. C Inter partes review cannot be requested against the first patent, because inter partes review is only applicable to patents issued on applications filed on or after March 16, 2013. D Inter partes reexamination can be requested. E None of the above.
(E) is correct.
(A) and (B) are incorrect because post-grant review is not available for either patent. A petition for a post-grant review of a patent must be filed no later than the date that is nine months after the date of the grant of a patent or of the issuance of a reissue patent. Among other things, the petitioner must certify that the patent for which review is sought is available for post-grant review. The post-grant review provisions, however, only apply to patents issued from applications that have an effective filing date on or after March 16, 2013. Thus, in this situation, post-grant review is not an option. Davis’s original filing date is October 1, 2011, which applies to both the first patent issued and to the patent issued as the result of the filing of a continuation. Since the application filed on March 17, 2013 is a continuation, the effective filing date will be October 1, 2011.
(C) is incorrect because inter partes review is available to challenge any patent regardless of whether granted under first-to-file or first-to-invent rules.
(D) is incorrect because inter partes reexamination is no longer available. (Any third party requester, prior to September 16, 2012, can request inter partes reexamination at any time during the period of enforceability of the patent (for a patent issued from an original application filed on or after November 29, 1999);)
There is no fee for filing a Petition to Make Special for an application relating to the treatment of cancer.?
The claims can be amended to add disclosure that was in the Abstract of the application as initially filed, without adding new matter.
false 708:
A petition to make an application special may be filed without a fee if the basis for the petition is:
(1) The applicant’s age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy resources; or
(iii) Contribute to countering terrorism.
true
whether an obviousness rejection is appropriate or not
2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness
KSR 7 Exemplary rationales that may support a conclusion of obviousness include:
- Linus is the inventor of an individualized security device, which he says has a code name of blanket. He confidentially discloses this to his lifelong friend and eternal pessimist Charles Brown on November 21, 2012. Unknown to Linus, Brown publicly uses the invention all over town, finding that it does actually make him feel better and provides enhanced confidence. Lucy notices Brown’s increased confidence and correlates that to the blanket. Believing that Brown is a complete and total loser who will just make any situation bad, she decides to take the blanket for herself and files a patent application on March 15, 2013. Linus subsequently files a patent application on March 17, 2013.
Which section of 102 bars patentability with respect to the Linus patent application? A 102(a) B 102(b) C 102(c) D 102(f) E None of the above
(E) is correct. AIA 102 will apply because Linus filed his patent application on March 17, 2013. Since Linus is the inventor who has filed an application within 12 months of public use, he will be able to eliminate the Brown use of his own invention by resorting to a Rule 130 affidavit. Linus may also be able to overcome any rejection based on the Lucy application by filing a Rule 130 affidavit. The question is not clear on that point because it goes beyond the scope of this question and is irrelevant to getting the correct answer. Nevertheless, a Rule 130 affidavit to remove Lucy would be applicable as long as Lucy is not claiming the same or substantially the same invention as Linus. If the claims in Lucy’s application are the same or substantially similar to what Linus files, an interference proceeding would be instituted. Notice that a derivation proceeding would not be appropriate because Lucy’s application is entitled to pre-AIA treatment. Where one application is entitled to pre-AIA, an interference proceeding will be conducted rather than a derivation proceeding. In any event, based on these facts, Linus will be able to overcome the Lucy application and the Brown public use. Therefore, no rejections will ultimately be proper.
- A design patent mus be filed____________
A With no more than one independent claim and one dependent claim directed to each embodiment.
B Only in English.
C Without a drawing if a drawing is unnecessary to understanding the invention.
D Within eight months of the first filing in a foreign country if the benefit of priority is to be preserved.
E By transmitting a copy to the International Association of Design Architects and Engineers (IADAE) at 603 Water Street, S.W. Washington D.C. 20002, which will then send a copy to the Patent Office.
(D) is correct. The general rule with respect to preserving priority in a design patent case is that the design patent application must be filed within six months of the filing of the previously filed priority application. However, the Patent Law Treaties Implementation Act (effective on December 18, 2013.) provides an additional two months within which to claim priority. In order to avail yourself of this additional two months to claim priority, the right to claim priority must be restored. The right to claim priority can be restored only if the delay in filing the subsequent application was unintentional. Thus, in the situation where the subsequent application was unintentionally filed outside of the six-month priority window, priority can still be established provided it is filed within the additional two months provided, but if and only if the delay was unintentional. Thus, it can be said that, to preserve priority in the case of a design application, the subsequent application must be filed within eight months of the first filing in a foreign country.
(A) is incorrect because design patent applications (and patents) have only one claim, which is an independent claim.
(B) is not the best choice. It is true that applications need to be filed in English, but if they are filed in a different language, the applicant will be given an opportunity to present an English translation without losing the filing date; therefore, it is incorrect to say in an absolute way that a design patent must be filed only in English.
(C) is incorrect because design patents cannot be filed without a drawing. The essence of a design patent application is the drawings provided to show the ornamental design; the drawings are the disclosure of the invention.
(E) is incorrect because you file a design patent application with the U.S. Patent and Trademark Office.
22.
A Notice of Allowance was transmitted by the Patent Office to your office on November 24, 2012. Your staff docketed the issue fee for payment on or before May 24, 2013, and your client was advised that unless you received payment in full before that date you would not pay the fee. On May 23, 2013, you receive a call from your client saying that he has mailed a check, but the check does not arrive by May 24. The best course of action would be:
A Pay the issue fee for your client.
B Advise your client that, because of your error, the application is now abandoned, but can be revived because the abandonment was unintentional.
C Pay the issue fee together with a three-month automatic extension of time.
D Advise your client that you did not pay the issue fee because the funds were not received in time.
E File a petition to withdraw from representation.
(B) is correct. The application has already gone abandoned because you have only three months to pay the issue fee. Thus, you had until February 24, 2013, within which to pay the issue fee. The application went abandoned as of February 25, 2013.
(A) is incorrect because it is too late to pay the issue fee.
(C) is incorrect because you cannot receive an extension of time to pay the issue fee.
1300
periods for reply
710
