Patent Bar Exam Review 2019 AIA Question (12/2)

Ralph, a patent agent, works with several small tech companies that must rely on financing to grow their organization. In some cases a financier wants to review patent applications that have been filed in the USPTO. Ralph has some situations where getting an application on file within a few hours may be important. What should Ralph do?(A) Since the company has filed a foreign application on the invention, Ralph may file a U.S. application including an ADS and indicating that the specification and drawings are replaced by reference to the previously filed application.
(B) Draft a specification and file it electronically.
(C) Draft a specification and file it electronically along with many black-and-white photographs of the invention.
(D) All of the above may be appropriate.
(E) None of the above is true.

ANSWER: (D).

If there is a foreign application, answer (A) would probably be the best choice.

If there are no prior applications and drawings are probably not necessary for an understanding of the invention, answer (B) would probably be the best choice.

If there are no prior applications and drawings are probably necessary, answer (C) would be the best choice. Submitting black-and-white photographs (instead of drawings) speeds up the process immensely.

See MPEP 601.01(a), subsection III and 37 CFR 1.57(a):

“(a) Subject to the conditions and requirements of this paragraph, a reference made in the English language in an application data sheet in accordance with § 1.76 upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date under § 1.53(b).”

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