Patent Bar T/F Questions

Question 1

T/F: Failure to record an assignment will result in that assignment being null and void

Answer 1

False–there is no requirement that assignments be recorded. Failure to record does not in and of itself play any role in the validity of the assignment. If an assignment is recorded, it will cut off ay rights a subsequent bona fide purchaser might obtain in the even that the patent owner attempts to assign the patent again.

Question 2

T/F: The recording of a document is not a determination by the Office of the validity of the document or the effect that document has on the title to an application.

Answer 2

True

MPEP 300&raquo_space; 317.03&raquo_space; 37 CFR 3.43 (Effect of Recording)

Question 3

T/F: Errors in recording assignments can be corrected, and no new recording fee is required.

Answer 3

False–need to submit the original recording assignment with the corrected recording assignment with another new recording fee.

MPEP 323 (Procedures for Correcting Errors in Recorded Assignment Document)&raquo_space; 37 CFR 3.34

Question 4

T/F: Access to the entire contents of a pending, unpublished application incorporated by reference into an issued patent can be obtained without notice to the owner of that application.

Answer 4

False–you only get a copy of the application (not the prosecution history or IFW) or the referenced section as filed.

MPEP 104&raquo_space; 37 CFR 1.14(a)(1)(iv)

Question 5

T/F: A person may not execute a substitute statement unless they have reviewed and understood the contents of the application.

Answer 5

True – 37 CFR 1.64 (substitute statements) and 37 CFR 1.56 (Duty to disclose)

Question 6

T/F: An inventor can be added to a provisional application under 37 CFR 1.48.

Answer 6

True.

See Appendix R&raquo_space; 1.48(d)&raquo_space; applies to correcting inventors in provisional application. s
1.48(a) applies to correcting inventors in nonprovisional applications.

Question 7

T/F: An inventor who protests his or her designation as an inventor is not entitled to inspect the file or to participate in subsequent prosecution.

Answer 7

False–the nonsigning inventor may protest his or her designation as an inventor and is entitled to inspect any paper in the application, order copies, and make their position of record in IFW. They can also arrange to do any of the preceding through a registered patent practitioner.

MPEP 409 (Death, Legal Incapacity, or Unavailability of the Inventor)&raquo_space; 409.03(i) (rights of the Nonsigning inventor or inventor designee)

Question 8

T/F: Registered attorneys or agents who are not of record in the file may not file papers in a patent application.

Answer 8

False–Registered patent practitioners may file papers in patent applications and reexamination proceedings even when not of record. Fill-in of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant. Interviews with a registered patent practitioner not of record will ordinarily be conducted based only on information and files supplied with themselves.

Question 9

T/F: In order to establish entitlement to an exception under AIA 102(b)(1)(B) the applicant must file an affidavit under rule 1.131.

Answer 9

False–it should be a 1.130 affidavit
1.130 Affidavit: disqualify a disclosure as prior art since subject matter obtained from inventor

1.131 Affidavit: this is for pre-AIA to swear back to the date of invention