Question Bank 2015-2017 Flashcards
An Examiner you have dealt with for many years calls you today to advise you as a courtesy that you filed, apparently by mistake, a letter from your client discussing in detail the competitive situation in his industry and asking you to keep this information in strictest confidence. You call the client who makes extreme threats about taking everything you have now or will ever have if this letter becomes public. You should:
(A) Call Tony Stark and see if he has any ideas for getting the letter back.
(B) File a petition and pay the required fee to expunge the letter and return it to you.
(C) Start spending whatever you have because you won’t have it for long.
(D) Ask your friend the Examiner to just mail it back to you or tear it up.
(E) Tell your client the letter has been destroyed and pray he never finds out to the contrary.
(B) is correct. See 37 C.F.R. 1.59. Information forming part of the original disclosure (i.e., written specification including the claims, drawings, and any preliminary amendment present on the filing date of the application) will not be expunged from the application file. However, an applicant may request that the Office expunge information (other than the original disclosure) by filing a petition. Any petition to expunge information from an application must include the fee and establish to the satisfaction of the Director that the expungement of the information is appropriate.
(A) is incorrect, although asking Iron Man for assistance has to come in a close second.
(C) is unnecessary because you can fix the problem.
(D) is not something a patent examiner can, or should, do.
(E) is incorrect because it would be unethical. Never pick the unethical answer on this Exam.
Your first job after passing the exam is with the largest and best patent law firm in the United States. You were able to lease both a Mercedes and Jeep out of your first month’s pay. Next month you start repaying that student loan. Your new boss returns the amendment you prepared together with a memo saying that he has discussed the amendment with the client and the client believes he is entitled to a broad claim that reads on the prior art. Your boss tells you to submit the amendment with such a broad claim ending the memo:
“I agree that such a claim is not patentable, but let’s let the Examiner tell this guy. He has a history of firing attorneys who won’t do what he wants.” Rule 11.18:
(A) Allows you to ethically file the amendment with the broad claim, because your client has a bona fide, but mistaken view that the claim is patentable.
(B) Forbids submitting such a claim.
(C) Allows the claim to be submitted so long as the client signs the amendment.
(D) Applies only to practitioners, not to other members of the public.
(E) Has no mechanism for enforcing its requirements.
(B) is correct. See 37 C.F.R. 11.18. This question requires you to suspend belief a bit; not because you get a great job and are making lots of money, but because you must stand up to your boss and tell them that Rule 11.18 forbids asking for a claim you know you are not entitled to receive. NOTE: Do not fight the facts. In life, there may be ways to finesse any set of claims or likely rejection. Here, you are clearly being told to assume that the claim is not patent eligible. In this situation, there is only one right answer - do not ask for a claim you know you are not entitled to receive.
The America Invents Act amends U.S. patent laws, among other things, to do which of the following?
(A) Convert the U.S. patent system from a “first to invent” system to a “first inventor to file” system.
(B) Treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country.
(C) Eliminate the requirement that a prior public use or sale be “in this country” to be a prior art activity.
(D) Treat commonly owned or joint-research-agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103.
(E) All of the above.
(E) is correct. All of the above are true statements. Section 3 of the AIA, among other things, amends the patent laws to: (1) convert the U.S. patent system from a “first to invent” system to a “first inventor to file” system; (2) treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country; (3) eliminate the requirement that a prior public use or sale be “in this country” to be a prior art activity; and (4) treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of35 U.S.C. 102, as well as 35 U.S.C. 103. These changes in section 3 of the AIA are effective on March 16,2013, but apply only to certain applications filed on or after March 16,2013.
Enya Brennan files a patent application directed to an improved music machine in Ireland on March 17, 2013. She subsequently files an international patent application under the PCT in Ireland on May 17, 2013, claiming the benefit of the earlier Irish filing. Upon learning of the ability to accelerate applications out of turn in the U.S., she files a nonprovisional patent application in the U.S. on July 4,2013, which claims the benefit of both the Irish filing and PCT filing, together with a request for Track One acceleration and payment of the appropriate fee. She receives a Notice of Allowance on October 15, 2013, and a U.S. patent issues December 31,2013.
What is the earliest date the Enya disclosure as filed will be considered prior art for subsequent applicants who file in the U.S.?
(A) March 17,2013
(B) May 17,2013
(C) July 4, 2013
(D) October 15, 2013
(E) December 31, 2013
(A) is correct. The AIA eliminates the so-called Hilmer doctrine. Under the Hilmer doctrine, pre-AIA 35 U.S.C. 102(E) limited the effective filing date for U.S. patents (and published applications) as prior art to their earliest U.S. filing date. In contrast, AIA 35 U.S.C. 102(D) provides that if the U.S. patent, U.S. patent application publication, or WIPOpublished application claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter. Therefore, if the subject matter relied upon is described in the application to which there is a priority or benefit claim, a U.S. patent, a U.S. patent application publication, or WIPO-published application is effective as prior art as of the filing date of the earliest such application, regardless of where filed.
Thus, the Irish filing date of March 17,2013, will be the earliest date that the Enya disclosure will be considered prior art against subsequent applications.
Keith Urbayne files a patent application directed to a self-preservation device to be used when caught between two divas who don’t very much like each other. He files a patent application in Australia on April 15, 2013. Subsequently, Urbayne files an international patent application under the PCT in Australia on June 1, 2013, claiming the benefit of the earlier Australian filing. The Australian patent application publishes on October 15, 2013, and the PCT application publishes December 1, 2013. Having soured on the U.S. thanks to an unfortunate reality-TV experience, Urbayne does not enter the U.S. national stage or otherwise seek a U.S. patent.
What is the earliest date the Urbayne disclosure as filed will be considered prior art for subsequent applicants who file in the U.S.?
(A) April 15, 2013
(B) June 1, 2013
(C) October 15, 2013
(D) December 1, 2013
(E) It will not be prior art in the U.S. because no U.S. filing was ever made
(A) is correct. The AIA eliminates the so-called Hilmer doctrine. Under the Hilmer doctrine, pre-AIA 35 U.S.C. 102(E) limited the effective filing date for U.S. patents (and published applications) as prior art to their earliest U.S. filing date. In contrast, AIA 35 U.S.C. 102(D) provides that if the U.S. patent, U.S. patent application publication, or WIPO published application claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter. Therefore, if the subject matter relied upon is described in the application to which there is a priority or benefit claim, a U.S. patent, a U.S. patent application publication, or WIPO-published application is effective as prior art as of the filing date of the earliest such application, regardless of where filed. This question is very similar to the previous question dealing with Enya. The only difference here is that Urbayne did not ultimately seek or obtain a U.S. patent. That does not matter, however. Because there was a publication of the PCT application, the Australian filing date of April 15, 2013, will be the earliest date that the Urbayne disclosure will be considered prior art against subsequent applications.
During the course of a long trial for patent infringement in Los Angeles, testimony from an expert during the day convinces you that you should file a continuation of a pending design application. That application has an outstanding Official Action, which is dated exactly six months ago. No response has been filed and you intend to allow the application to become abandoned. It is now 9:30 PM in Los Angeles and today is a Tuesday in August. Your best course of action would be:
(A) Transmit a request by facsimile to file a continuation under Rule 1.53(D) to the Patent Office including a request for a three-month extension of time.
(B) Transmit a request by facsimile to file a continuation under Rule 1.53(D) to the Patent Office including a request for a three-month extension of time, and a Certificate of Transmission.
(C) File a Rule 1.53(B) application tomorrow together with a four-month extension of time.
(D) File a continuation under Rule 1.53(D) via EFS including a request for a three month extension of time.
(E) Find a Post Office that is open and transmit a Rule 1.53(B) or (D) application to the Patent Office by Express Mail before Midnight together with a request for a three month extension of time.
(E) is correct. 37 CFR 1.6. Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia. Since it is already 9:30pm in Los Angeles that means it is 12:30am in Alexandria, Virginia, where the Patent Office is located. Thus, it is already the day after the last day to take action at the USPTO, so filing a CPA via fax (which is otherwise possible) cannot be accomplished because it will not be given a filing date as of the time filed in the time zone where you are located. The only way to get the benefit of the time zone where you are located is to file the old-fashioned way, which is to file via U.S. Postal Service Express Mail. NOTE: You must pay a 3-month extension fee because you would have been given a 3-month shortened statutory period to respond and since it is the last day of the 6-month statutory period, you have to pay for 3 months of extension to do anything, including filing a continuation that claims the benefit of that pending application.
(A) and (B) are incorrect because, even with a Transmission Certificate, the time of receipt governs and the CPA will get a filing date that is the day after the 6-month statutory period expired. The same applies to (D) as well. EFS is governed by date and time received at the USPTO.
(C) is incorrect because there is no such thing as a 4-month extension to respond to an Office Action. This choice puts you beyond the 6-month statutory period to respond.
Which of the following is true?
(A) A statement with respect to a translation being submitted in response to a Notice of Missing Parts must state that the translation is accurate and that the translator is fluent in both English and the language being translated.
(B) If the inventors identified in a nonprovisional application which is filed without an oath or declaration differs from the inventors who execute the oath or declaration subsequently filed, the inventorship must be corrected under Rule 1.48.
(C) A provisional application (claiming foreign priority from a U.K. application) can be filed under Rule 1.53(C).
(D) A five-month automatic extension of time to file an appeal brief in an appeal of a utility application is always possible.
(E) A newly executed oath must always be submitted in filing an application under Rule 1.53(B).
(D) is correct. The 6-month statutory deadline does not apply with respect to filing an appeal brief. Similarly, the 6-month statutory deadline does not apply to responding to a Notice of Missing Parts. In these two situations, you will be given 2 months to respond and they are fully extendable, meaning 5 months of extension are available. These two peculiar situations are the only two that allow you to go beyond the 6-month statutory deadline, so you should be prepared to see them on the exam.
(A) is incorrect because no statement of competence is required.
(B) is incorrect because only the inventors named in the oath or declaration are official.
(C) is incorrect because a provisional application cannot claim priority.
(E) is incorrect because a copy of the original oath can be submitted in filing a continuation under Rule 1.53(B). Notice, however, that if you are filing a continuation-in-part, a new oath or declaration would be warranted. A continuation contains no new matter not in the parent application. A continuation-in-part does contain matter not in the parent application; thus, the parent oath/declaration would not cover that newly added information in a continuation-in-part.
Your client Jenny Smith comes to you with happy news. IBM has taken a nonexclusive field of use license under her pending application, which has an issue fee due. No money was received and she is unsure when payment might be received, if ever. At the time the application was filed you filed a Small Entity Declaration. You should now:
(A) Notify the Patent Office of the change in status.
(B) Repay the amounts saved in filing and prosecuting the application as a Small Entity.
(C) Do nothing because Small Entity status is not lost by the grant of a non-exclusive license.
(D) Pay the issue fee as a Small Entity and consider repayment when money is received from IBM.
(E) Ask IBM to pay the issue fee.
(A) is correct. 37 CFR 1.27. A small entity is one that has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status. Thus, while Jenny is a small entity, IBM is not a small entity. So, she will have to notify the Patent Office of the change in status. Note, however, that once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
(B) is incorrect because you do not have an obligation to go backwards and pay any deficiency.
(C) is incorrect because a license, even a nonexclusive license, does cause a change in small entity status.
(D) is incorrect because you are required to notify the Patent Office of the change and pay the appropriate fees.
(E) is something you may be able to try and negotiate, but it doesn’t change the fact that you must do
(A).
Your client Wilson Blue calls you so angry he can hardly speak. He has learned that his bitterest competitor and ex-spouse has visited each of his customers, told them she has an as-yet-unpublished patent application issuing in two months which they will infringe and demanding that they stop selling Blue’s product. In fact, she repeatedly told them that she will ruin them in such an infringement case. All but one has dropped your client. You should advise Blue:
(A) He has insufficient standing because as yet she does not have an issued patent; therefore she cannot yet bring a lawsuit.
(B) There is nothing to worry about. What she is telling Blue’s clients cannot be correct since you have three months, not two months, to pay the issue fee.
(C) Petition the Commissioner for access to her unpublished application on the grounds of Special Circumstances.
(D) Since he is no longer married to his ex-spouse, there is no way to access her application on file at the USPTO.
(E) You can access the application since the issue fee has apparently been paid. 15.
(C) is correct. See 35 USC 122 and 37 CFR 1.14(i). A petition to access an otherwise confidential application must: (1) include payment of the fee; and (2) include a showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access to all or part of the application. The situation described is a situation where there are special circumstances.
Which of the following can you do as a matter of right in a non provisional patent application?
(A) File a substitute specification if accompanied by a statement of no new matter and a marked up copy.
(B) Conduct an interview after a Final Rejection.
(C) Appeal any Official Action that rejects the claims.
(D) Submit an IDS after a First Official Action upon a showing that it could not have been submitted earlier.
(E) Withdraw from representing a client at any time before the six-month deadline for responding to an Official Action.
(A) is correct. See 37 CFR 1.125. A substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter. However, a substitute specification is not permitted in a reissue application or in a reexamination proceeding.
AIA 35 U.S.C. 102(B)(2)(C) provides that a disclosure made in a U.S. patent, U.S. patent application publication, or WIPO-published application is not prior art to a subsequent claimed invention under 35 U.S.C. 102(A)(2) if, not later than the _________ - ‘’the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person.”
(A) effective filing date of the subsequent claimed invention …
(B) effective filing date of the first invention …
(C) date of conception of the first invention …
(D) date of conception of the subsequent invention …
(E) None of the above.
(A) is correct. AIA 35 U.S.C. 102(B)(2)(C) provides that a disclosure made in a U.S. patent, U.S. patent application publication, or WIPOpublished application is not prior art to a claimed invention under 35 U.S.c. 102(A)(2) if, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person. This provision replaces the exception in pre-AIA 35 U.S.C. 103(C) that applied only in the context of an obviousness analysis under 35 U.S.C. 103 to prior art that was commonly owned at the time the claimed invention was made. See 35 U.S.c. 102(B)(2)(C).
With respect to subject matter made pursuant to joint research agreements, which of the following are required to demonstrate the claimed invention was owned by the same person or subject to an obligation of assignment to the same person?
I. The subject matter disclosed was developed and the claimed invention was made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
II. The claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.
III. The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(A) I
(B) II
(C) I and II
(D) I and III
(E) I, II and III
(E) is correct. Each of II and III are correct. Under 35 U.S.C. 100(h), the term “joint research agreement” as used in AIA 35 U.S.C. 102(C) is defined as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. AIA 35 U.S.C. 102(C) specifically provides that subject matter disclosed and a claimed invention is deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of AIA 35 U.S.C. 102(B)(2)(C) if: (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention; (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. See AIA 35 U.S.C. 102(B)(2)(C).
Which of the following statements is not true?
(A) The one-month limit to complete a response found incomplete can be extended.
(B) An application can be accepted for filing and given a filing date even though the inventors are not identified.
(C) Claims, which are cancelled by a Preliminary Amendment filed with the application, are not counted in determining the additional claim feels).
(D) The substance of telephone discussions with an examiner must be made of record in the application file.
(E) A double patenting rejection can be made only if the two applications have at least one inventor in common.
(E) is correct. Substantively, a double patenting rejection can be made when two applications have either a common owner or at least one common inventor. Thus, it is incorrect to say such a rejection can only be made when there is at least one common inventor.
Your client John Wells has at last received the Notice of Allowance covering his new Mexican jumping bean. Mr. Wells is a resident of Costa Rica, and tells you he is worried that someone will start some proceedings in the Patent Office or in some court affecting his patent and he will not be aware because postal delivery is so bad in his country. He wants his brother who lives in Los Angeles to take care of any and all business relating to the patent. You should:
(A) Advise him not to worry because the examiner is a friend of yours and will call you if anything happens.
(B) Prepare for Mr. Wells’ signature a written designation of his brother as the one on whom service should be made concerning the patent.
(C) Advise him that all papers from the Patent Office will be sent to you as attorney of record and you will forward them to him by a secure route.
(D) Prepare and file a Notice of Foreign Patent Owner requesting that all papers be sent to Mr. Wells care of the American Embassy in Costa Rica.
(E) Prepare and file an assignment of the patent to you together with an agreement that you will forward any and all monies received with respect to the patent to Mr. Wells.
(B) is correct. See 37 C.F.R. 1.33(A). The Patent Office will correspond with one person at one address. This address is designated the Correspondence Address. (A) is incorrect. The examiner will not keep you posted. The Patent Office communicates officially only with the Correspondence Address. (C) is incorrect. This is what frequently happens but that’s only because the attorney’s address is usually listed as the Correspondence Address. (D) is inferior. While you could list the Embassy as the Correspondence Address, that is not what the client is asking you to do. You can accomplish exactly what the client wants with (B), so (D) is clearly an inferior choice. (E) is incorrect. Having the client sign over the patent to you is full of Ethical land mines. It is unnecessary and likely unethical unless done exactly properly. It also isn’t what the client wants. You can accomplish exactly what the client wants with (B).
Bernard is an independent inventor who, like so many other independent inventors, does not have the funds necessary to seek advice from a patent attorney. He joined a local inventors group and has learned from some of the more experienced members that the new first-to-file law continues to include a grace period. In fact, he understands that the grace period allows an inventor such as himself to publish a disclosure of his invention and then subsequently file a patent application within 12 months. If you had the opportunity to speak with Bernard, which of the following would you NOT tell him?
(A) The disclosure of the invention in a patent application should be as complete as possible.
(B) Any subsequent disclosure by another will be unable to be used as prior art as long a U.S. patent application is filed within 12 months.
(C) An independently arrived at disclosure by another can be considered prior art and could prevent the issuance of a patent.
(D) If the disclosure describes elements A, B and C, and a subsequent disclosure prior to filing discloses A, B, C and D, then at least element D would be considered prior art.
(E) All of the above.
(B) is correct. Many subsequent disclosures will be prior art. There is only a very limited exception available to the inventor under AIA 102(B). Thus, it is incorrect to say that “any subsequent disclosure by another” can be overcome.
(A) is incorrect because a complete disclosure at the time of filing is always good advice since priority attaches only to what arrives at the time of filing.
(C) is incorrect because independent disclosures can be prior art that cannot be overcome, depending on the circumstances.
(D) is incorrect because it is a true statement. The Patent Office gave this example when they released their interpretations of the AIA 102(B) exception: If inventor discloses XY and someone subsequently independently discloses XYZ, at least Z will be prior art against the inventor.
(E) is incorrect because (B) is correct.
With respect to AIA 102, which of the following is true?
(A) The availability of a disclosure as prior art may be measured from the effective filing date of the claimed invention, no matter where that filing occurred.
(B) The AIA adopts a global view of prior art disclosures and thus does not require that a public use or sale activity be “in this country” to be a prior art activity.
(E) The catch-all “otherwise available to the public” means, among other things, that secret prior sales are not considered prior art.
(D) The patent or application is considered to have been effectively filed, with respect to any subject matter described in the patent or application, as of the earliest of (1) the actual filing date of the patent or the application for the patent containing the claimed invention; or (2) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date.
(E) All of the above.
(E) is correct. All of the above are correct.
(A) is correct. Under the AIA, it is possible for even foreign filing dates to be prior art dates. A foreign filing date will be a prior art date if a US patent, US patent application or WIPO publication of a PCT application claims priority to a foreign filing date. This is a big change from preAIA, where foreign filing dates were never prior art events.
(B) is correct. Sales and public use are prior art events under AIA 102 regardless of whether they occur inside or outside the U.S.
(C) is correct. AIA 35 U.S.C. 102(A)(1) contains the additional residual clause “or otherwise available to the public.” Residual clauses such as “or otherwise” or “or other” are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the “or otherwise available to the public” residual clause of the AIA’s 35 U.S.C. 102(A)(1) as indicating that secret sale or use activity does not qualify as prior art.
(D) is correct. AIA 35 U.S.C. 102(D) provides that, for purposes of determining whether a patent or application for patent is prior art to a claimed invention under AIA 35 U.S.C. 102(A)(2), the patent or application must be considered to have been effectively filed, with respect to any subject matter described in the patent or application, as of the earlier of the actual filing date of the patent or the application for patent, or the filing date of the earliest application that describes the subject matter and for which the patent or application for patent is entitled to claim a benefit or right of priority under 35 U.S.C. 119, 120, 121, or 365.
Your client GS Inc. is the owner of an application that is now allowed as a result of your skill in drafting claims and prosecuting applications. You are instructed to pay the issue fee and you transmit the properly filled out form to the Patent Office the day before the three-month deadline together with your check. Unfortunately due to your bad eyesight you send a check that is $1 less than the amount due. Your letter accompanying the payment broadly authorizes the Patent Office to charge any additional fees that may be due to your deposit account, which contains ample funds. The result will be:
(A) The application will become abandoned because a general authorization is not sufficient to allow the Patent Office to debit your account.
(B) The application will become abandoned because deposit accounts were abolished in 2005.
(C) The Patent Office will send you an incomplete issue fee notice setting a one-month period to pay the deficiency.
(D) The Patent Office will call you to advise you of your error.
(E) None of the above.
(E) is correct. See 37 C.F.R. 1.311(B) and 37 C.F.R. 1.136
(A)(3). An authorization to charge the issue fee to a deposit account may be filed in an individual application only after mailing of the notice of allowance. A general authorization on file prior to the sending of the notice of allowance will not operate to pay the issue fee. The USPTO is offering a patent with a notice of allowance. Some action must be taken to accept that offer of a patent. Here, there was appropriate action taken, albeit payment of less than the issue fee together with a specific authorization to look to the deposit account for the additional necessary funds. This suffices and the USPTO will seek the additional $1 from the attorney’s deposit account. (A) is incorrect. It is true that a general authorization is not sufficient, but paying the incorrect issue fee does allow the USPTO to look to the deposit account to correct the deficiency. See 37 CFR 1.311 (b )(1).
(B) is incorrect because deposit accounts were not abolished.
(C) and (D) are incorrect because the Office will merely take the $1 from the attorney’s deposit account.
Arnold Horshack is the inventor of a new and improved turkey call, which he conceived and reduced to practice on January 30, 2012. The device creates the most obnoxious sound, which approximates a wheezing hyena. Field studies show that turkeys appear to be drawn to the noise out of curiosity, or perhaps pity for what sounds like a dying animal. Horshack files a patent application in Canada on April 1, 2012, and on May 1, 2012, he files a U.S. patent application claiming priority to his Canadian filing date. For financial reasons, the U.S. application is expressly abandoned on July 1, 2012. The Canadian application publishes on October 1, 2013.
Freddie Washington files a U.S. non provisional patent application on November 1, 2013, which relates to a turkey call that approximates a wheezing coyote.
Which of the following would be the earliest date the Horshack disclosure could be used as prior art against Washington?
(A) January 12, 2012.
(B) April 1, 2012.
(C) May 1, 2012.
(D) July 1, 2012.
(E) October 1, 2013.
(E) is correct. U.S. patents and U.S. patent application publications can be prior art as of their earliest effective filing date, regardless of whether the earliest filing date is based upon an application filed in the U.S. or in another country. For example, AIA 35 U.S.C. 102(D) provides that if the U.S. patent, U.S. patent application publication, or WIPO-published application claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter. Thus, a foreign filing date can be a prior art date. But will we have a published U.S. application, an issued U.S. patent or a published PCT? There is no mention of a PCT application, and the U.S. application was abandoned so there will be no U.S. patent. Thus, this question turns on whether there will be a U.S. published application that claims priority to Horshack’s Canadian filing date. A U.S. patent application will be published promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under title 35, United States Code, unless the application is no longer pending. See 37 C.F.R. 1.211(A)(1). Because the Horshack U.S. patent application was expressly abandoned, it will not publish. Thus, Horshack will not obtain a U.S. patent and there will be no U.S. publication. Therefore, the Canadian filing date will not be the prior art date. That means the earliest prior art date would be the date of the Canadian publication, making
(E) the correct answer.
Jasper Collins filed a patent application on February 15, 2012. He received a Notice of Allowance on January 7, 2014, paid the issue fee on February 5, 2014, and the patent issued April 15, 2014. During the prosecution of his original patent application, he made a substantial improvement. He filed a continuation-in-part application on January 10, 2014, which included disclosure not previously filed and claims drawn to that disclosure, as well as other claims not previously presented but which were previously supported. Because this new improvement was so important and there were significant licensing opportunities, Jasper paid the fee to accelerate the CIP. In the First Office Action on the Merits, which was dated February 28, 2014, the examiner rejected Jasper’s claims based on prior art under AIA 35 U.S.C. 102(A)(1). Surprised that the examiner applied AIA 35 U.S.C. 102(A)(1), Jasper comes to you for help on March 3, 2014. Which of the following represents the best advise to give Jasper?
(A) Because the CIP contained claims not supported until May 16, 2013, the entire CIP will be treated under AIA.
(B) Because the issue fee has been paid in the previous nonprovisional application, it is too late to do anything.
(C) Because the Notice of Allowance has already been received, it is too late to do anything.
(D) The CIP will be treated under AIA, but since the parent application has not yet issued and remains pending a continuation of the parent could be filed and the claims having support dating back to the parent application will then be treated under pre-AIA.
(E) Cancel the claims in the CIP that are directed to the matter not presented until the January 10, 2014, filing.
(D) is correct. If an application on filing contains at least one claim having an effective filing date before March 16,2013, and at least one claim having an effective filing date on or after March 16, 2013, the application will be examined under AIA even if the latter claims are cancelled.
Thus (E) is incorrect. However, if a pre-AIA parent application is pending and an applicant inadvertently files a continuing application with claims having an effective filing date on or after March 16,2013, the applicant could file a continuation from the pre-AIA parent application without any claim to the benefit of the AIA application and without any claim to a claimed invention having an effective filing date on or after March 16, 2013. In this situation, the continuation would be examined as a pre-AIA application under pre-AIA 35 D.S.C. 102 and 103. Based on the facts presented, the parent application has not yet issued, so a continuation can be filed, making (D) the superior answer.
(A) is not correct because it is inferior in comparison to
(D). (A) is correct insofar as it goes, but the call of the question asks what advice do you give Jasper. Since there is a way that he can still have pre-AIA apply to at least the parent disclosure this advice, although correct, is incomplete. With a continuation filed relating to the parent application Jasper can still seek additional claims based off the original disclosure of the parent with pre-AIA law being applied. Thus, (D) is superior to (A).
(B) and (C) are incorrect because it is not too late to do anything. A continuation can be filed from the parent on or before April 15, 2014.
Samantha Rocks is the inventor of a new musical instrument called “the siren,” which produces enchanting, melodious tones like no other. With the assistance of a patent practitioner, Rocks filed a provisional patent application on January 5, 2014. Unfortunately, Rocks has fallen on hard times and can no longer afford the services of a patent practitioner. Undeterred, Rocks decides to file her own non provisional patent application, which was accomplished on January 15, 2015. The nonprovisional patent application was identical to the provisional filing.
Which of the following most accurately reflects the status of the January 15, 2015, nonprovisional patent application?
(A) The non provisional patent application will be considered a substitute application.
(B) The nonprovisional patent application will be considered timely filed because it was filed within 14 months of the filing of the provisional.
(C) The failure to preserve priority can be restored if the delay in filing the non provisional patent application was unintentional.
(D) If Rocks files a petition to extend the provisional patent application, she will be able to claim priority to the provisional in the January 15, 2015 filing.
(E) None of the above.
(C) is correct. Thanks to the Patent Law Treaty (PLT), applicants who unintentionally fail to file an application within the 12-month priority period can have that period extended up to an additional 2 months.
(A) is incorrect because the nonprovisional application is not a substitute application.
(B) is close, but not completely correct. Rocks will still need to seek restoration of the ability to claim priority and demonstrate that the delay in filing the nonprovisional patent application was unintentional. The PL T does not automatically make it possible to claim priority within 14 months.
(D) is incorrect because a provisional patent application only lasts 12 months and then goes abandoned. Provisional applications cannot be extended.
(E) is incorrect because (C) is correct
