Patent Questions Flashcards
Q). In January, 2003, Lefty invented a baseball having a titanium core and wrote a typewritten paper fully describing his invention and how to make it. On March 1, 2003, Lefty gave the paper to a friend of his who was a member of a private baseball museum which was open only to members, not to the public in general. The members of the club were wealthy individuals who were baseball fans, but had no interest in the design, development, manufacture, use, or sale of baseballs. On March 15, 2003, Lefty’s friend took the paper to the museum and placed it in the library of the museum, catalogued under Lefty’s name, where several members saw it between March 15 and March 31, 2003. In January, 2004, the directors of the museum decided to open the museum’s library to the general public beginning on May 1, 2004, in hopes of attracting additional members. In preparation for that opening, during the month of March 2004 the books, periodicals, papers, and articles in the library, including Lefty’s, were catalogued according to subject matter and placed on the shelves of the library where they became available to the general public on May 1, 2004. On April 2, 2005, Lefty consulted a registered patent practitioner about filing a patent application on his invention. Which of the following is the advice that the practitioner should give to Lefty concerning patentability of his invention?
A). Lefty cannot obtain a valid U.S. patent on his invention, because the knowledge of Lefty’s invention by the members of the museum who read and discussed Lefty’s paper in March 2003 constitutes “known … by others” within the meaning of 35 USC §102(a).
B). Lefty cannot obtain a valid U.S. patent on his invention, because the placing of Lefty’s paper in the museum’s library on March 15, 2003, where it was available to the members of the museum, rendered the paper a “printed publication” within the meaning of 35 USC §102(b).
C). Lefty cannot obtain a valid U.S. patent on his invention, because the cataloguing and shelving of Lefty’s paper in the museum’s library in March 2004 rendered the paper a “printed publication” within the meaning of 35 USC §102(b).
D). 35 USC §102(b) will not preclude the issuance of a valid U.S. patent on Lefty’s invention, so long as an application is filed in the USPTO prior to May 1, 2005, because Lefty’s paper did not become a “printed publication” until the museum library was opened to the general public on May 1, 2004.
E). Lefty cannot obtain a valid U.S. patent on his invention, because the opening of the museum library to the public on May 1, 2004, together with the prior cataloguing and shelving of Lefty’s paper, rendered the paper a “printed publication” within the meaning of 35 USC §102(a).
D is correct answer.
EXPLANATION: 35 USC §102(a) is inapposite because the four patent-precluding events set forth in §102(a) must occur prior to the applicant’s invention in order to preclude patentability. See, e.g., MPEP §2132.01 (“Applicant’s disclosure of his or her own work within the year before the application filing date cannot be used against him or her under 35 U.S.C. 102(a)”), and MPEP §2136.05 (“even if applicant’s work was publicly disclosed prior to his or her application, applicant’s own work may not be used against him or her unless there is a time bar under 35 U.S.C. 102(b)”). Answer option A. is therefore incorrect because the knowledge of Lefty’s invention by the members of the museum came from Lefty’s disclosure of his invention to them, which necessarily came after Lefty’s invention. Answer options B. and C. are incorrect because a document in a library does not constitute a patent-barring “printed publication” unless the library was open to the interested public and the document was catalogued according to subject matter more than a year before the filing date of the application. Answer option E. is incorrect because a “printed publication” within the meaning of 35 USC §102(a) must have occurred prior to the applicant’s invention. Lefty’s article describing his invention could not have been published prior to his date of invention.
Q). which of the following is not correct?
A). When correcting originally filed papers *>ininin
D is correct answer.
EXPLANATION: Red Ink is typically not allowed, but used for IFW (Image File Wrapper) purposes (see 714.17). 37CFR 1.530(d)(3) “showing the proposed changes in RED for approval by the examiner” MPEP 605.04(g): When the request is granted to add or delete inventors under 37 CFR 1.48, the change should be noted in red ink in the left margin of the original oath or declaration.
Q). An inventor invented a baseball with a titanium core. On June 20th, 2003 lefty printed an article, which was not distributed. On June 25th, 2003 the baseball was put in a library, which was open only to select patrons, none of whom have skill in the art. On June 30th, the museum was opened to the public. 2004 Only July 1st, 2004 a TV advertisement aired announcing the opening of the museum. On July 4th, 2004 a grand opening of the museum occurred. The inventor filed his application on June 29th, 2004. Which, if any, is the date of the prior art that would prevent the application from issuing as a patent?
A). June 20th
B). June 25th
C). June 30th
D). July 1st
E). July 4th
B is correct answer.
Q). A mirror was created, however the inventor did not include the reflective qualities of the mirror in the specification. Which of the following would comply with the USPTO procedures.
A). Because the definition of mirror automatically includes its reflective qualities, there is no need to amend the specification to include the reflective qualities
B). something
C). something
D). something
E). The mirror in one part of the specification is “parallel,” and the mirror in another part is “perpendicular.” The specification is conflicting and one who has knowledge in the art would not be able to tell the difference, so amend the specification.
A is correct answer.
EXPLANATION: Inherent Function, Theory, or Advantage. Reflection is an inherent function of a mirror, so there is no need to mention it in the description. Whether it is positioned parallel or perpendicular has nothing to do with its reflective qualities, and would likely be obvious. “Special” reflective qualities known to one skilled in the art (if included – this is hypothetical) would be different and should be included for enablement purposes.
Q). Question pertaining to a mirror invention and whether or not the reflective qualities of the mirror are inherent enough to not be mentioned in the specification. The question asks which would fail for a lack of enablement under 112.
A). replacing “mirror” with “reflective surface” when it is not defined in spec., but would be known to PHOSITA.
B). replacing “mirror” with dictionary definition “…” and no other definition was given in spec for mirror and it was obvious dictionary definition was meant.
C). replacing “mirror” with light reflecting surface and the examiner properly takes notice of this well known fact
D). “mirror” is replaced in the claim with “reflective surface” when a mirror is defined as a reflective surface in the spec.
E). the spec claims a mirror as being parallel in one place and claims a mirror being perpendicular in another place and the claim describes mirror and PHOSITA would not know from the disclosure which property of the mirror was claimed.
E is correct answer.
Q). Question on submitting: 51 tables, each no more than 1/2 page long. Which would be a proper submission? Which, if any, is a proper submissions?
A). Duplicate each table onto separate CD’s and submit both CD’s
B). Submit two CD’s: One with tables 1-25, one with tables 26-51.
C). Submit one CD with all 51 tables on the CD
D). A and B are both correct
E). None of the above
E is correct answer.
EXPLANATION: A single table contained on fifty pages or less must be submitted either as drawings (in compliance with 37 CFR 1.84) or as part of the specification in paper (in compliance with 37 CFR 1.52). A single table contained on 51 pages or more may be submitted on a CD-ROM or CD-R (in compliance with 37 CFR 1.52(e) and 37 CFR 1.58). The presentation of a subheading to divide a large table into smaller sections of less than 51 pages should not be used to prevent an applicant from submitting the table on a compact disc unless the subdivided tables are presented as numerous files on the compact disc so as to lose their relationship to the overall large table.
Q). Which, if any, is in accordance with the USPTO guidelines?
A). If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.
B). If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall not proceed with the international search.
C). If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall not establish an abstract.
D). If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself establish an abstract ONLY in English
E). None of the above
A is correct answer.
EXPLANATION: PCT RULE 38.1. – Lack of Abstract If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.
Q). Applicant submitted an application without an abstract. The International Searching Authority, in compliance with the MPEP, furnished an abstract to complete the submission. The applicant wants to make a change to the abstract What, if anything, can the applicant do?
A). Nothing. An abstract written by the ISA stands as is.
B). The applicant may, within 30 days of the mailing of the ISR, submit comments on the abstract
C). The applicant may, within 60 days of the mailing of the ISR, submit comments on the abstract
D). The applicant may, within 30 days, appeal ISA decision to furnish an abstract
E). None of the above
B is correct answer.
EXPLANATION: The International Searching Authority shall establish an Abstract (if missing), and the applicant may within one month from the date of mailing of the international search report, submit comments on the abstract established by the International Searching Authority.
Q). Application A before pto concerning drug-QP dispensal machine with touch screen. Examiner thinks obvious via 103 per X and Y. X teaches drug-BV dispensal machine, Y teaches touch screen and suggests that drug dispensal machines could benefit from touch screen. How should the examiner properly reject application A via 103?
A). Rely solely on TSM
B). Disregard the Graham factors and rely on new findings from KSR
C). use the teaching as a rationale to support obviousness
D). Resolving the level of ordinary skill in the pertinent art to make a determination of obviousness
E). B & C
C is correct answer.
Q). you represent Joe Blockhead who files a nonprovisional application which claims the benefit of a provisional application. You receive a Notice of Allowance and Blockhead decides that he wants to extend the term of his patent and remove the benefit. How do you enter an amendment to do this?
A). Pay the issue fee then file a RCE with the amendment.
B). Don’t pay the issue fee, and file a RCE with the amendment.
C). Pay the issue fee, then request for a 30 day extension of time
D). Pay the issue fee then file an the amendment.
E). Don’t pay the issue fee, and file the amendment.
B is correct answer.
Q). You represent Joe Blockhead, who filed an nonprovisional application, which originally claimed the benefit of a foreign patent. However, Joe Blockhead removed the claim to benefit. He recently approached you and wants to put the claim for benefit back into the application. It has been 5 months since the filing of the US application, and 17 months since the filing of the foreign application. Which, if any, is true?
A). Argue that the removal of the claim to benefit was unintentional, and submit a claim to benefit
B). Since Joe removed the claim to benefit himself, he cannot claim an “unintentional removal.”
C). Since the “4/16 rule has been passed (it’s been more than 4 months since filing the US app, and more than 6 months since filing the original foreign application), he cannot add the claim back in.
D). Both B and C
E). None of the above
D is correct answer.
EXPLANATION: Realize the 4 months/16 months deadlines (see 1.55(a) and 1.78(a)(2)(ii)),figure out these deadlines are exceeded, and realize that because the applicant removed the claim himself he cannot avail himself of adding the claim as unintentional (new ground of rejection is applied after the application withdraws his claim, and he has no way to put the claim back).
Q). An applicant submits an application, but there are two missing parts of the specification, and notifies the Applicant on June 1st. The applicant files both missing parts of the specification, however he files them at different times, the first submission on June 6th, and the second 70 days later. What should the USPTO do?
A). Allow both submissions as they were timely filed
B). Reject both submissions as the second submission was not timely filed, thus nullifying both submissions
C). Accept the first submission but reject the second
D). Accept the first submission and notify the applicant of the improper second submission
E). none of the above
C is correct answer.
EXPLANATION: Answer – there are only 2 months to submit the missing parts, and the applicant’s 2nd submission was not timely. Rule 20 International Filing Date 20.7 Time Limit Where an invitation under Rule 20.3(a)”Missing Parts” or 20.5(a)”Defective”, as applicable, was sent to the applicant, two months from the date of the invitation;
Q). A PCT application was submitted without any claims, however, the PCT application claims the benefit of a provisional application. What should the office do?
A). Nothing.
B). reject the submission and notify the application
C). notify the applicant of the lack of claims and request a submission of the missing claims
D). Accept the application and notify the applicant of the missing claims
E). None of the above
C is correct answer.
Q). Which of the follow, if any, can be corrected in a PCT application by amendment?
A). correct a misspelled word like ccar
B). adding a drawing that was left out but included in a claimed benefit earlier
C). adding a page to explain in the specification something clearly shown on a drawing
D). none of the above
E). A,B,C
A is correct answer.
EXPLANATION: In PCT apps, only OBVIOUS can be correct. This includes, linguistic errors, spelling errors, and grammatical errors (so long as it doesn’t change the meaning when fixed). Chemical or Math formulas cannot be fixed (unless fixed error would be common knowledge). BUT, (1) Omission of Entire Sheets CANNOT be fixed, you cannot rely on some claimed benefit app to show you meant to include it (or that it was obvious). The priority doc cannot be relied upon to show obvious error.
Q). There are two practitioners, one of whom has been suspended for 3 months, and the other does not have an address on file. Which of the following is incorrect?
A). send the office action to the suspended practitioner
B). send the action to the first named inventor
C). send the action to the last known address of the other practitioner
D). send the action the executor
E). none of the above is incorrect
A is correct answer.
EXPLANATION: ¶ 4.08 Attorney/Agent Suspended (Plural Practitioners) The present application was filed containing a power of attorney to [1] and [2]. A correspondence address was supplied for [3]. No address was supplied for [4].[5] was [6] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice. As a correspondence address, other than to [7], is not of record, this Office action is being mailed to [8] at his/her last known address as listed on the register of patent attorneys and agents. To ensure that a copy of this Office action is received in a timely manner to allow for a timely reply, a copy of the Office action is being mailed directly to the address of the inventor first named in the declaration or oath. Any reply by applicant(s) should be by way of the remaining practitioner(s) of record and should include a new correspondence address.
Q). Which is incorrect?
A). if a practitioner has been suspended, the USPTO can “ad litem” appoint a new practitioner
B). if a practitioner has been suspended, the USPTO cannot “ad litem” appoint a new practitioner
C). The USPTO will not communicate with a suspended practitioner
D). The USPTO will mail office actions to a joint practitioner, or inventor, in the event of a practitioner being suspended
E). none of the above
A is correct answer.
Q). Which, if any, are proper mediums for a submission of gene sequences?
A). Diskette
B). magnetic tape
C). 8mm Cartidge
D). CD
E). Optical Disk
A,B,C,D,E are correct.
EXPLANATION: All of the above: § 1.824 Form and format for nucleotide and/or amino acid sequence submissions in computer readable form. (a) The computer readable form required by § 1.821(e) shall meet the following requirements: […] (1) Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb storage; 5.25 inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage. (2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250 bits per inch, 9 track; Format: Unix tar command; specify blocking factor (not “block size”); Line Terminator: ASCII Carriage Return plus ASCII Line Feed. (3) 8mm Data Cartridge: Format: Unix tar command; specify blocking factor (not “block size”); Line Terminator: ASCII Carriage Return plus ASCII Line Feed. (4) Compact disc: Format: ISO 9660 or High Sierra Format. (5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 640 Mb.
Q). A registered practitioner receives an Office action for Application X, a patent application filed after November 29, 1999. The action contains a rejection of all the claims as being obvious under 35 USC 103(a) over Patent A in view of Patent B. Patent A is only available as prior art under 35 USC 102(e). Patent B is available under 35 USC 102(b). The practitioner seeks to disqualify Patent A as prior art under 35 USC 103(c). Which of the following would be sufficient evidence to disqualify Patent A as prior art in accordance with the patent laws, rules and procedures as related in the MPEP?
A). A declaration signed by an employee of Corporation K, who is not empowered to act on behalf of Corporation K, stating that at the time the invention claimed in Application X was made, the claimed invention and Patent A were commonly owned by Corporation K.
B). A declaration signed by the inventor of Patent A stating that at the time the invention claimed in Application X was made, the invention claimed in Application X and the invention claimed in Patent A were both subject to an obligation of assignment to the same person.
C). A statement by the inventor Jones, the sole inventor of Application X, saying that at the present time, Application X and Patent A are commonly owned.
D). A statement by the practitioner stating that Application X and Patent A were, at the time the invention claimed in Application X was made, commonly owned by the same person.
E). A statement by inventor Jones, the sole inventor of Application X, saying that at the time the invention claimed in Application X was made, Jones owned a majority interest in Patent A.
B,D are correct.
EXPLANATION: (B) or (D) is accepted as the correct answer. As to (B) and (D), see MPEP § 706.02(l)(2), under the heading “II. Evidence Required To Establish Common Ownership.” (B) is accepted because applicants, e.g., inventors, have the best knowledge of the ownership of their applications, and because their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO. (D) reproduces the example set forth under the foregoing heading. (A) is incorrect because applicants or the representatives of record have the best knowledge of the ownership of their applications, and because their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO. (C) is incorrect because the statement does not establish common ownership at the time the later invention was made. 35 U.S.C. § 103(c). (E) is incorrect because it does not establish that the prior art invention and the claimed invention are entirely or wholly owned by the same person. MPEP § 706.02(l)(2). The reason (C) is wrong in this example is not because the inventor of X cannot make a 1.132 affidavit regarding the invention, rather because he is not establishing common ownership. Answer (E) is likewise wrong because it does not establish common ownership. I believe the question as given above only explains half the concept.
Q). All three inventors from Sweden file a IA in a USRO on Jan 4, 2004 (*Non Us residents) with English translation and necessary documents. What will the USRO do with the submission?
A). The submission wont get a filing date b/c US/RO is not competent (due to applicant lack of citizenship) and they wont get a filing date.
B). although the US/RO may be incompetent, they will forward to US/RO.
C). App will be forwarded to IB/RO and given date which it was received at US/RO.
D). The US/RO will contact the applicants of the need to submit the application with the proper office
E). none of the above is correct
C is correct answer.
Q). Two Mexican inventors and one US national inventor, and a corporation that is a US resident file an IA application in Spanish language at USPTO. What will they do with the application?
A). PTO is competent because XYZ corp. is a U.S. National Corp.
B). PTO is competent to handle any submission
C). PTO not competent because no U.S. citizen
D). PTO not competent because no U.S. citizen AND application isn’t translated.
E). PTO not competent because application isn’t translated
E is correct answer.
EXPLANATION: the USPTO is not a competent receiving Office for the international application under PCT Rule 19.1(a).
Q). In 2002, a Japanese resident/national filed a PCT application in Japanese’s at USPTO, designating ONLY Japan. What should USPTO do?
A). Invite to submit an English translation
B). invite to submit English translation w/ surcharge fee
C). give filing date once English translation is submitted
D). forward it to Japanese RO and not give a filing date
E). transmit it to IB once transmit fee is submitted
E is correct answer.
Q). A phone was made in Spain. A US application covering the utility of the phone was filed within the appropriate time period. Later, the patent issues for the phone in Spain. Some time later (more than 6 months), while the application is still at the USPTO, the inventors realize that they have a great looking phone and they want to get a patent for the design. What can they do?
A). File a design application claiming priority to the US application
B). File a CIP of the utility application
C). Give up
D). File a design application with priority based off the Spanish patent
E). File a CPA
C is correct answer.
EXPLANATION: The Spanish phone question involves foreign filing in a DESIGN application. The answer is GIVE UP b/c you can’t perfect the claim after 6 months have passed under 102(d). They key is DESIGN v UTILITY foreign filing – patent priority must be claimed within 6 months (versus 1 year for utility). The foreign application becomes a statutory bar after 6 months under 102(d) to the US CIP design application.
Q). A design patent was applied for in the US with foreign priority to Spanish patent. Later, the applicant alters the keypad design and files a CIP for the new design. Which, if any, is correct?
A). If the prior patents anticipate or render obvious the new design, 102(d) kills the CIP.
B). Since the keypad was not supported in the parent app, the CIP will not stand
C). Since the filing was within 6 months, the CIP will stand
D). None of the above
E). All of the above
A is correct answer.
EXPLANATION: 102(d)
Q). An inventor creates a new lip gloss Jan 1, 2005. Subsequently, she begins to wear the lip gloss and begins testing the gloss she invented by kissing people at parties without telling others. On March 1, 2005, she begins to distribute her lip gloss as gifts. It’s now March 2, 2006. Can she file for a patent?
A). no, the app will be rejected under 102(b)
B). no, the app will be rejected under 102(a)
C). yes, she will be able to file for a patent without any bars
D). something
E). something
A is correct answer.
EXPLANATION: The examiner would issue a rejection based on a 102 (b) statutory bar, based on the inventor’s activities in distributing the invention more than one year before filing his patent app.
Q). On Saturday, February 6, 1999, in Texas, inventor Smith successfully tested a wireless telephone. On Sunday, February 7, 1999, Smith began testing the market place by offering to sell the wireless telephone in a variety of urban and rural regions, throughout Texas. On Tuesday, February 8, 2000, registered practitioner Bill filed a patent application for inventor Smith fully disclosing and claiming the same wireless telephone he tested on February 6, 1999,and offered for sale on February 7, 1999. Bill received a non-final Office action rejection of the claim under 35 U.S.C. § 102(b) based on Smith’s activities in testing the wireless telephone, and testing the market place. Which, if any, of the following actions taken by Bill comport with proper PTO rules and procedure, and will overcome the rejection?
A). Filing a timely reply traversing the rejection on the grounds that February 7, 1999was a Sunday, that Smith could not file an application on the one-year anniversary Sunday because the PTO is closed, so Smith’s activities must be measured from Monday, February 8, 1999, which is not more than one year prior to the application date.
B). Filing a timely reply traversing the rejection on the grounds that Smith’s activities were experimental only and therefore excepted from 35 U.S.C. § 102(b).
C). Filing a timely reply with an affidavit under 37 C.F.R. § 1.131 presenting statements by Smith that the activities were by Smith, himself, as opposed to another, and the activities were experimental.
D). Filing a timely reply with an affidavit under 37 C.F.R. § 1.132 demonstrating by objective evidence of the commercial success of the wireless telephone.
E). none of the above
E is correct answer.
EXPLANATION: ANSWER: (E). MPEP 2133.03(e)(6) sets forth that while technological, developmental testing is permitted and is not a bar under 35 U.S.C. § 102(b), market testing is not permitted. Choice (A) is incorrect. Since Smith’s activities, as set forth by the facts given in the question, included market testing, choices (B) and (C) are incorrect. (C) is further incorrect since an affidavit under 37 C.F.R. § 1.131 is not applicable to rejections under 35 U.S.C. § 102(b). (D) is incorrect since secondary considerations, such as commercial success, are not applicable rejections under 35 U.S.C. § 102(b).
Q). A claim in a pending application was amended to define “a VELCRO fastener” as one of the elements. The specification describes the use of a VELCRO fastener in the invention, but doesn’t describe the structure of such a fastener. The examiner rejected the application because of the usage. How should the examiner address the claim?
A). maintain the VELCRO rejection because sufficient structure is not recited
B). maintain the rejection because VELCRO is a recognized prior art fastener, and this fastener would be obvious to replace with the current fastener
C). do not object/reject
D). object to the trademark for being a trademark and request the applicant to modify the specification to include further structure
E). none of the above
A is correct answer.
EXPLANATION: trademarks used in claims are indefinite under 112 paragraph 2, pursuant to section 706.03(d) of the MPEP. Thus, anytime a Velcro trademark is used in a claim, it fails to recite sufficient structure and should be rejected. The applicant is relying solely on the trademark to define the element, without reciting any specific structural limitations.
Q). Which of the following can never be considered a small entity?
A). A University with 500 students that receives 37% of its funding from grants from large entity companies
B). A small business with net sales of $2 million/year
C). A small business with 200 employees and gross sales of $5.2 million/year
D). The US government
E). A taxi service that employs 520 people
D,E are correct.
EXPLANATION: Never more than 500 employees, never the government
Q). Who may never sign the written assertion of claiming small entity status?
A). An attorney or agent registered with the office
B). one of the inventors
C). an assignee of full interest
D). a partial assignee
E). all of the above may sign
E is correct answer.
EXPLANATION: All of the above may sing: A partial assignee can sign a small entity status, but they cannot file it on their own. See § 509.03(III). “A distinction exists as to who can file a written assertion of entitlement to small entity status once the written assertion is signed. 37 CFR 1.27(c)(2)(ii) and 37 CFR 1.33(b) permit one of several inventors to file as well as to sign a written assertion. The same is not true for a partial assignee. 37 CFR 1.27(c)(2)(iii). While a partial assignee may sign a written assertion, the written assertion must be filed by an appropriate party under 37 CFR 1.33(b).”
Q). A practitioner paid fees to file as a large entity, later found they were eligible as a small entity, can you ask for refund?
A). If you filed more than 3-months ago, not 1.136 extendable and you cannot submit for a refund
B). If you filed more than 2 months ago, not 1.136 extendable and you cannot submit for a refund
C). you may submit for a refund anytime within 2 years
D). something
E). none of the above
A is correct answer.
Q). When must a small entity statues be reasserted?
A). in a continuing application
B). in a reissue
C). both A and B
D). something
E). none of the above
C is correct answer.
EXPLANATION: small entity statues must be reasserted in a continuing application
Q). Company X, has an agent Joe Smith retained. They give him a Application number to a patent application of one of their competitors and ask him to get information (specifics of the application). Can he access this information?
A). Yes, because he has the application number, he may call to obtain this information
B). Yes, because he has the application number, he may request (in writing) this information
C). No, because he does not have consent from the inventors of the other application
D). No, the PTO only gives this information to applicants, assignees, or agents of record
E). something
D is correct answer.
Q). all of the following are in accordance with the MPEP except:
A). An item submitted in envelope that is determined to be material to patentability will NOT be made of record and will stay in the envelope
B). An item submitted in envelope that is determined to be material to patentability will be made of record and will stay in the envelope
C). absent a petition, if material wasn’t material to patentability, it would not be made of record
D). absent a appeal if material wasn’t material to patentability, it would not be made of record
E). all of the above are correct
A is correct answer.
EXPLANATION: Information which is considered by the party submitting the same to be either trade secret material or proprietary material, must be clearly labeled as such and be filed in a sealed, clearly labeled, envelope or container. Each document or item must be clearly labeled as a “Trade Secret” Upon receipt of the envelope or container, the Office will place the envelope or container in an artifact FOLDER if the application is an Image File Wrapper (IFW) application. If the application is maintained in paper, the confidential or proprietary information will be retained in the envelope or container.
