Oct. 02 AM/PM Flashcards
1
Q
- In accordance with the MPEP and USPTO rules and procedure, an application for patent may be made on behalf of a joint inventor in certain situations. Who, by petition, may make application on behalf of a joint inventor who has refused to sign the application (“nonsigning inventor”), if the other joint inventor (“signing inventor”) executes the application?
A A person other than the signing inventor, to whom the nonsigning inventor has assigned the invention.
B A person other than the signing inventor, with whom the nonsigning inventor has agreed in writing to assign the invention.
C The signing inventor.
D A person other than the signing inventor, who shows a strong proprietary interest in the invention.
E All of the above.
A
Correct Answer(s):
E
Related MPEP Chapter(s):
MPEP 400 - Representative of Inventor or Owner
Answer Reasoning:ANSWER: Choice (E) is now the correct answer. Under prior practice, the available practice here was limited. But under the AIA (Rules 43, 45 and 46), any of those listed can sgin if the true inventor refuses to sign.
2
Q
- To satisfy the written description requirement of the first paragraph of 35 USC 112, an applicant must show possession of the invention. An applicant’s lack of possession of the invention may be evidenced by:
A Describing an actual reduction to practice of the claimed invention.
B Describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention.
C Requiring an essential feature in the original claims, where the feature is not described in the specification or the claims, and is not conventional in the art or known to one of ordinary skill in the art.
D Amending a claim to add a limitation that is supported in the specification through implicit or inherent disclosure.
E Amending a claim to correct an obvious error by the appropriate correction.
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (C) is the most correct answer. See, "Guidelines for Examination of Patent Applications under 35 U.S.C. § 112, ¶ 1, 'Written Description' Requirement," MPEP 2163. "The claimed invention as a whole may not be adequately described if the claims require an essential or critical feature that is not described in the specification and is not conventional in the art or known to one of ordinary skill in the art." (A) is not the most correct answer. See, "Guidelines for Examination of Patent Applications under 35 U.S.C. § 112, ¶ 1, 'Written Description' Requirement," MPEP 2163. Describing an actual reduction to practice of the claimed invention is a means of showing possession of the invention. (B) is not the most correct answer. See, "Guidelines for Examination of Patent Applications under 35 U.S.C. § 112, ¶ 1, 'Written Description' Requirement," MPEP 2163. (D) is not the most correct answer. See, "Guidelines for Examination of Patent Applications under 35 U.S.C. § 112, ¶ 1, 'Written Description' Requirement," MPEP 2163, which states, "While there is no in haec verba requirement, newly added claim limitations must be supported by in the specification through express, implicit, or inherent disclosure." (E) is not the most correct answer. See, "Guidelines for Examination of Patent Applications under 35 U.S.C. § 112, ¶ 1, 'Written Description' Requirement," MPEP 2163, left column, second paragraph, which states, "An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error in the specification, but also recognize the appropriate correction."
3
Q
- According to USPTO rules and procedure, which of the following can be overcome by an affidavit under 37 CFR 1.131 in a pre-AIA filing?
A A rejection properly based on statutory double patenting.
B A rejection properly made under 35 USC 102(d) based on a foreign patent granted in a non-WTO country.
C A rejection properly made under 35 USC 102(a) based on a journal article dated one month prior to the effective filing date of the U.S. patent application. Applicant has clearly admitted on the record during the prosecution of the application that subject matter in the journal article relied on by the examiner is prior art.
D A rejection properly made under 35 USC 102(b) based on a U.S. patent that issued 18 months before the effective filing date of the application. The patent discloses, but does not claim, the invention.
E None of the above.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (E) is the correct answer. MPEP § 715. (A) is incorrect because an affidavit under 37 C.F.R. § 1.131 is not appropriate where the reference is a prior U.S. patent to the same entity, claiming the same invention. MPEP § 715. (B) and (D) are each incorrect because an affidavit under 37 C.F.R. § 1.131 is not appropriate where the reference is a statutory bar under 35 U.S.C. § 102(d) as in (B) or a statutory bar under 35 U.S.C. § 102(b) as in (D). MPEP § 715. (C) is incorrect because an affidavit under 37 C.F.R. § 1.131 is not appropriate where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art. MPEP § 715.
4
Q
- The MPEP and USPTO rules and procedure provide for ways that a nonstatutory double patenting rejection can be overcome. Which of the following is an effective way to overcome a nonstatutory double patenting rejection?
A Filing a 37 CFR 1.131 affidavit to swear behind the patent on which the rejection is based.
B Filing a terminal disclaimer under 37 CFR 1.321(c).
C Filing a 37 CFR 1.131 affidavit arguing that the claims are for different inventions that are not patentably distinct.
D Filing a reply arguing that there is only one common inventor regarding the claims of the application and the claims of the patent.
E All of the above.
A
Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 800 - Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
Answer Reasoning:ANSWER: Choice (B) is the correct answer. MPEP § 804.02, subpart (II) reads, “A rejection based on a nonstatutory type of double patenting can be avoided by filing a terminal disclaimer in the application or proceeding in which the rejection is made.” Choices (A) and (C) are each incorrect. MPEP § 804.02, reads, “The use of a 37 C.F.R. § 1.131 affidavit in overcoming a double patenting rejection is inappropriate…37 C.F.R. § 1.131 is inapplicable if the claims of the application and the patent are ‘directed to substantially the same invention.’ It is also inapplicable if there is a lack of ‘patentable distinctness’ between the claimed subject matter.” Choice (C) is further incorrect since a nonstatutory double patenting rejection can be based on the claims not being patentably distinct. MPEP § 804, subpart (II)(B)(1). Choice (D) is incorrect because MPEP § 804, subpart (I)(A) reads, “Double patenting may exist between an issued patent and an application filed by the same inventive entity, or by an inventive entity having a common inventor with the patent.” Choice (E) is incorrect because choices (A), (C), and (D) are each incorrect.
5
Q
- Inventor A filed a patent application and assigned the entire interest in the application to his employer, MegaCorp. The application issued as a utility patent on July 9, 2002. In June 2004, MegaCorp’s management first learns that a second inventor, Inventor B, should have been named as a co-inventor with respect to at least one claim of the issued patent. There was no deceptive intent in failing to name Inventor B in the original application. Inventor A, who is unfamiliar with patent law and concepts of inventorship, incorrectly believes that he should be the sole named inventor on the patent, and refuses to cooperate with any effort by MegaCorp to change the named inventive entity. The issued patent contains no other error. In accordance with the Manual of Patent Examining Procedure, which of the following procedures is/are available for MegaCorp to seek correction of the named inventive entity without any agreement, cooperation or action from Inventor A?
A File, on or before July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.
B File, after July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.
C Request a Certificate of Correction to add Inventor B as a named inventor.
D Submit in the issued patent file: a Request for Correction of Inventorship Under the Provisions of 37 CFR 1.48 that sets forth the desired inventorship change; a statement by Inventor B that the error in inventorship occurred without deceptive intention on her part; an oath or declaration executed by Inventor B; all required fees; and the written consent of MegaCorp.
E A and B are each available procedures.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 1400 - Correction of Patents Answer Reasoning:ANSWER: The best choice is (E). See MPEP § 1412.04. Reissue is a proper vehicle for correcting inventorship in a patent. Because correction of inventorship does not enlarge the scope of the patent claims, the reissue application may be filed more than two years after the patent issued. Answers (A) and (B) are therefore both correct, and (E) is the best response. Although a certificate of correction may be used to correct inventorship where all parties are in agreement, the facts of the question show that Inventor A is not in agreement. Choice (C) is thus not an available option for MegaCorp. Choice (D) is incorrect because the provisions of 37 C.F.R. § 1.48 are not available to correct inventorship in an issued patent.
6
Q
- Which of the following statements is true in a pre-AIA filing?
A In the context of 35 USC 102(b), a magazine need only be placed in the mail to be effective as a printed publication.
B The earliest date declassified printed material may be taken as prima facie evidence of prior knowledge under 35 USC 102(a) is as of the date the material is cataloged and placed on the shelf of a public library.
C Declassified printed material is effective as a printed publication under 35 USC 102(b) as of the date of its release following declassification.
D The American Inventors Protection Act (AIPA) amended 35 USC 102(e) to provide that U.S. patents, U.S. application publications, and certain international application publications can be used as prior art under 35 USC 102(e) based on their earliest effective filing date only against applications filed on or after November 29, 2000.
E The American Inventors Protection Act (AIPA) amended 35 USC 102(e) to provide that U.S. patents, U.S. application publications, and certain international application publications can be used as prior art under 35 USC 102(e) based on their earliest effective filing date only against applications filed prior to November 29, 2000 which have been voluntarily published.
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (C) is correct. MPEP § 707.05(f) states, "In the use of [declassified material] ... as an anticipatory publication, the date of release following declassification is the effective date of publication within the meaning of the statute." (A) is wrong. MPEP § 706.02(a) states, "A magazine is effective as a printed publication under 35 U.S.C. § 102(b) as of the date it reached the addressee and not the date it was placed in the mail." (B) is wrong. MPEP § 707.05(f) states, "For the purpose of anticipation predicated upon prior knowledge under 35 U.S.C. §102(a) the above noted declassified material may be taken as prima facie evidence of such prior knowledge as of its printing date even though such material was classified at that time." (D) and (E) are wrong. The AIPA amended 35 U.S.C. § 102(e) to provide that U.S. patents, U.S. application publications, and certain international application publications can be used as prior art under 35 U.S.C. § 102(e) based on their earliest effective filing date against applications filed on or after November 29, 2000, and applications filed prior to November 29, 2000 which have been voluntarily published. MPEP § 706.02(a).
7
Q
- While traveling through Germany (a WTO member country) in December 1999, Thomas (a Canadian citizen) conceived of binoculars for use in bird watching. The binoculars included a pattern recognition device that recognized birds and would display pertinent information on a display. Upon Thomas’ return to Canada (a NAFTA country) in January 2000, he enlisted his brothers Joseph and Roland to help him market the product under the tradename “Birdoculars.” On February 1, 2000, without Thomas’ knowledge or permission, Joseph anonymously published a promotional article written by Thomas and fully disclosing how the Birdoculars were made and used. The promotional article was published in the Saskatoon Times, a regional Canadian magazine that is also widely distributed in the United States. Thomas first reduced the Birdoculars to practice on March 17, 2000 in Canada. A United States patent application properly naming Thomas as the sole inventor was filed September 17, 2000. That application has now been rejected as being anticipated by the Saskatoon Times article. Which of the following statements is most correct?
A Thomas can rely on his activities in Canada in establishing a date of invention prior to publication of the Saskatoon Times article.
B In a priority contest against another inventor, Thomas can rely on his activities in Canada in establishing a date of invention.
C In a priority contest against another inventor, Thomas can rely on his activities in Germany in establishing a date of invention.
D Statements (A) and (B) are correct, but statement (C) is incorrect.
E Statements (A), (B), and (C) are each correct.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (E) is the most correct answer. Thomas may rely on activities in both Germany (a WTO member country) and Canada (a NAFTA country) in establishing a date of invention prior to publication of the Saskatoon Times article or in establishing priority. 35 U.S.C. § 104; see also MPEP 715.01(c).
8
Q
- Which of the following documents is not open to public inspection?
A The abandoned parent application of a divisional application. A patent was granted on the divisional application, which refers to the abandoned parent application.
B Assignment document relating to both an issued patent and a patent application not published under 35 USC 122(b).
C Assignment document relating to a pending reissue application.
D Copy of assignment record relating to both a pending patent application and an abandoned patent application not published under 35 USC 122(b).
E Assignment document relating to both an abandoned patent application not published under 35 USC 122(b) and a pending reissue application.
A
Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 100 - Secrecy, Access, National Security, and Foreign Filing
Answer Reasoning:ANSWER: (D) is correct. (A) is wrong. 37 C.F.R. § 1.14(e)(2); MPEP § 103, application files are available upon request because the divisional application refers to the abandoned parent application, and the division issued as a patent, causing the application to be open to inspection. (B), (C) and (E) are wrong and (D) is correct. MPEP § 301.01.
9
Q
- In accordance with the MPEP, and USPTO rules and procedure, a patent application may be made by someone other than the inventor in certain situations. In which of the following situations would an application not be properly made by someone other than the inventor?
A The inventor is deceased, and the application is made by the legal representative of the deceased inventor.
B The inventor is deceased, and the application is made by one who has reason to believe that he or she will be appointed legal representative of the deceased inventor.
C The inventor is a minor (under age 18) who understands and is willing to execute the declaration, but the application is made by the minor’s legal representative.
D The inventor is insane, and the application is made by the legal representative of the insane inventor.
E The inventor is legally incapacitated, and the application is made by the legal representative of the legally incapacitated inventor.
A
Your Choice:(B) Correct Answer(s): A B C D E
10
Q
- Jane files a nonprovisional application with the USPTO containing at least one drawing figure under 35 USC 113 (first sentence) and at least one claim. Subsequently, Jane receives a “Notice of Omitted Items” from the USPTO indicating that the application which Jane filed lacks page 5 of the specification. Assuming that the application without page 5 satisfies 35 USC 112, which of the following statements is true based on proper USPTO practice and procedure?
A If Jane is willing to accept the application as filed, she need not respond to the Notice (except to say she is not responding), and the Office will accord the filing date of the original application. Jane will need to file an amendment renumbering the pages consecutively and canceling incomplete sentences caused by the missing page 5.
B Jane must promptly submit the omitted page and accept an application filing date as of the date of submission of the omitted page.
C Jane must promptly submit the omitted page and will be accorded a filing date as of the date of filing the original application.
D Within 3 months of the Notice date, Jane must file an affidavit asserting that page 5 was in fact deposited in the USPTO with the original application. Jane will be accorded the filing date of the original application.
E Within 3 months of the Notice date, Jane must file a proper petition asserting that page 5 was in fact deposited in the USPTO with the original application, accompanied by the proper petition fee and evidence that page 5 was in fact deposited as alleged.
A
Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 600 - Parts, Form, and Content of Application
Answer Reasoning:ANSWER: (A) is correct, however, Jane must inform the office that she is “not responding”, and (B), (C), (D) and (E) are wrong. MPEP § 601.01(d).
11
Q
- Which of the following statements relevant to a third party submission in a published patent application filed before 9/16/12 accords with proper USPTO practice and procedure?
A A submission of patents by a member of the public must be made within 2 months of the date of publication of the application.
B A submission of patents by a member of the public must be made prior to the mailing of a Notice of Allowance.
C A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is later.
D A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is earlier.
E Any submission not filed within the period set forth in the patent rules will be accepted provided it is accompanied by the processing fee set forth in 37 CFR 1.17(i).
A
Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 600 - Parts, Form, and Content of Application
Answer Reasoning:ANSWER: (D) is correct. 37 C.F.R. §1.99(e). (D) is correct because 37 C.F.R. § 1.99(e) provides, “A submission under this section must be filed within two months from the date of publication of the application (§ 1.215(a)) or prior to the mailing of a notice of allowance (§ 1.311), whichever is earlier.” Therefore, answer (D) is correct and answers (A), (B), and (C) are incorrect. (E) is wrong because 37 C.F.R. § 1.99(e) recites, “A submission by a member of the public to a pending published application that does not comply with the requirements of this section will be returned or discarded.”
12
Q
- In accordance with the MPEP and USPTO rules and procedure, correspondence transmitted to the USPTO by facsimile is not permitted in certain situations. Which of the following facsimile transmissions to the USPTO will be accorded a date of receipt by the USPTO?
A Facsimile transmission of a request for reexamination under 37 CFR 1.510 or 1.913.
B Facsimile transmission of drawings submitted under 37 CFR 1.81, 1.83 through 1.85, 1.152, 1.165, 1.174, or 1.437.
C Facsimile transmission of a response to a Notice of Incomplete Nonprovisional Application for the purpose of obtaining an application filing date.
D Facsimile transmission of a correspondence to be filed in a patent application subject to a secrecy order under 37 CFR 5.1 through 5.5 and directly related to the secrecy order content of the application.
E Facsimile transmission of a continued prosecution application under 37 CFR 1.53(d) and an authorization to charge the basic filing fee to a deposit account.
A
Correct Answer(s):
E
Related MPEP Chapter(s):
MPEP 500 - Receipt and Handling of Mail and Papers
Answer Reasoning:ANSWER: Choice (E) is the correct answer. MPEP § 502.01, and 37 C.F.R. § 1.6(d)(3). MPEP § 502.01 reads, “The date of receipt accorded to any correspondence permitted to be sent by facsimile transmission, including a continued prosecution application (CPA) filed under 37 C.F.R. § 1.53(d), is the date the complete transmission is received by an Office facsimile unit…An applicant filing a CPA by facsimile transmission must include an authorization to charge the basic filing fee to a deposit account or to a credit card.” Choice (A) is incorrect because 37 C.F.R. § 1.6(d) states, “Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: …(5) A request for reexamination under §1.510 or § 1.913.” Choice (B) is incorrect because 37 C.F.R. § 1.6(d) also states, “Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: …(4) Drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72.” Choice (C) is incorrect because 37 C.F.R. § 1.6(d) also states, “Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: …(3) Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in 1.8(a)(2)(i)(A)…” 37 C.F.R. § 1.8(a)(2)(i)(A) reads, “The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date…” Choice (D) is incorrect because 37 C.F.R. § 1.6(d) also states, “Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: …(6) Correspondence to be filed in a patent application subject to a secrecy order under §§ 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application.”
13
Q
- If a reissue application is filed within two years of the original patent grant, the applicant may subsequently broaden the claims during prosecution of the pending reissue prosecution beyond the two year limit, ________________________________.
A if the applicant indicates in the oath accompanying the reissue application that the claims will be broadened.
B if an intent to broaden is indicated in the reissue application at any time within three years from the patent grant.
C if the reissue application is filed on the 2-year anniversary date from the patent grant, even though an intent to broaden the claims was not indicated in the application at that time.
D if the reissue application is a continuing reissue application of a parent reissue application, and neither reissue application contained an indication of an intent to broaden the claims until 4 years after the patent grant.
E provided, absent any prior indication of intent to broaden, an attempt is made to convert the reissue into a broadening reissue concurrent with the presentation of broadening claims beyond the two year limit.
A
Correct Answer(s): A Related MPEP Chapter(s): MPEP 1400 - Correction of Patents Answer Reasoning:ANSWER: (A) is correct. MPEP § 1412.03. In re Doll, 164 USPQ 218, 220 (CCPA 1970). (B) is wrong because 35 U.S.C. § 251 prescribes a 2-year limit for filing applications for broadening reissues. (C) is wrong because although Switzer v. Sockman, 142 USPQ 226 (CCPA 1964), holds that while a reissue application filed on the 2-year anniversary date from the patent grant is considered to be filed within 2 years of the patent grant, it is necessary that an intent to broaden be indicated in the reissue application within the two years from the patent grant. MPEP § 1412.03. (D) is wrong because a proposal for broadened claims must be made in the parent reissue application within two years from the grant of the original patent MPEP § 1412.03. In re Graff, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997). (E) is wrong because there was no intent to broaden indicated within the two years. MPEP § 1412.03. In re Fotland, 228 USPQ 193 (Fed. Cir. 1985).
14
Q
- Which of the following is not in accordance with the provisions of the MPEP?
A Where joint inventors are named, the examiner should not inquire of the patent applicant concerning the inventors and the invention dates for the subject matter of the various claims until it becomes necessary to do so in order to properly examine the application.
B Under 35 USC 119(a), the foreign priority benefit may be claimed to any foreign application that names a U.S. inventor as long as the U.S. named inventor was the inventor of the foreign application invention and 35 USC 119(a)-(d) requirements are met.
C Where two or more foreign applications are combined in a single U.S. application, to take advantage of the changes to 35 USC 103 or 35 USC 116, the U.S. application may claim benefit under 35 USC 119(a) to each of the foreign applications provided all the requirements of 35 USC 119(a)-(d) are met.
D One of the conditions for benefit under 35 USC 119(a) is that the foreign application must be for the same or a nonobvious improvement of the invention described in the United States application.
E If a foreign application for which priority is being claimed under 35 USC 119 is filed in a country which does not afford similar privileges in the case of applications filed in the United States or to citizens of the United States and the foreign country is not a WTO member country, any claim for the foreign priority thereto by a U.S. application will not be effective.
A
Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 200 - Types, Cross-Noting, and Status of Application
Answer Reasoning:ANSWER: (D) is the best answer as the inventions must be the same in the foreign and U.S. applications. As to (A) through (C), see MPEP § 605.07 at p. 600-49, right column. As to (E), see 35 U.S.C. § 119 which provides that the previously filed application must have been filed in a country that affords similar privileges in the case of applications filed in the United States or to citizens of the United States or in a WTO member country.
15
Q
- In accordance with the MPEP and USPTO rules and procedure, certain individuals owe a duty to the USPTO to disclose all information known to be material to patentability of the claim(s) pending in an application. Which of the following parties does not have the duty?
A An inventor named in the application who relies on a patent attorney to prepare and prosecute the application.
B A corporation to which an assignment of the entire interest in the application is on record at the USPTO.
C An agent who prepares the application.
D An attorney who prosecutes the application.
E A person, who is not an inventor named in the application, who is substantively involved in the preparation and prosecution of the application, and who is associated with an inventor named in the application.
A
Correct Answer(s): B Related MPEP Chapter(s): MPEP 2000 - Duty of Disclosure Answer Reasoning:ANSWER: Choice (B) is the correct answer. MPEP § 2001.01, and 37 C.F.R. § 1.56(c). MPEP § 2001.01 states that "the duty applies only to individuals, not to organizations...the duty of disclosure would not apply to a corporation or institution as such." (A) is incorrect because the duty of disclosure applies to each inventor named in the application. 37 C.F.R. § 1.56(c)(1). (C) and (D) are each incorrect because the duty of disclosure applies to an each attorney or agent who prepares or prosecutes the application. 37 C.F.R. § 1.56(c)(2). (E) is incorrect because, in the case of a person who is not a named inventor or an attorney or agent but who prepares or prosecutes the application, the duty of disclosure applies to each such person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application. 37 C.F.R. § 1.56(c)(3).
