Author: John Meeks

PatBar AIA QotW January 22, 2018

A company from England, AJAX, developed an invention including a surface treatment that was necessary to the satisfactory performance of the invention. In discussions with their legal staff relating to the filing of a patent application in the U.S., the company decided to maintain their surface treatment technology as a trade secret. On September 16, 2012, a patent application was filed in the USPTO without any reference to the surface treatment.

I. During the above discussions, one of the inventors stated that based on the new law under the AIA there is no requirement to disclose the best mode in an application.

II. At that time one of the legal staff stated that the AIA did not change the requirement that a patent application must set forth the best mode of carrying out the invention.

(A) Only the first statement is correct.
(B) Only the second statement is correct.
(C) Both statements are correct.
(D) Neither statement is correct.
(E) The Question is ambiguous.

 

 

ANSWER: (B). See MPEP 2165 (including the examples in MPEP 2165.04, subsection II):

“A third requirement of 35 U.S.C. 112(a) (applicable to applications filed on or after September 16, 2012) is that:

The specification … shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”

 

Questions prepared by David E. Meeks, Esq. © 2017 Institute for Patent Studies, Inc. All rights reserved.

PatBar AIA QotW January 15, 2018

Which of the following is/are true?

(A) The AIA defines the term “claimed invention” as the subject matter defined by a claim in a patent or an application for patent.
(B) The AIA defines the term “effective filing date” for a claimed invention in a patent or application for patent (other than a reissue application or a reissued patent) as meaning the earlier of the actual filing date of the patent or the application for the patent containing the claimed invention, or the filing date of the earliest provisional, nonprovisional, international (PCT) or foreign patent application to which the patent or application is entitled to benefit or priority as to such claimed invention.
(C) The AIA defines the term “inventor” as the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention, and defines the term “joint inventor” or “co-inventor” as any one of the individuals who invented or discovered the subject matter of a joint invention.
(D) (A), (B) and (C)
(E) (B) and (C)

 

 

ANSWER: (D). See MPEP 2151, second paragraph, and 35 U.S.C. 100.

 

Questions prepared by David E. Meeks, Esq. © 2017 Institute for Patent Studies, Inc. All rights reserved.

PatBar AIA QotW January 8, 2018

Which of the following is/are true?

(A) AIA 35 U.S.C. 102(a)(1) provides that a person is not entitled to a patent if the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(B) AIA 35 U.S.C. 102(a)(2) provides that a person is not entitled to a patent if the claimed invention was described in an issued patent, or in a patent application publication, in which the patent or application names another inventor, and was effectively filed before the effective filing date of the claimed invention.
(C) AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a).
(D) AIA 35 U.S.C. 102(b)(1) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a)(1), and AIA 35 U.S.C. 102(b)(2) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a)(2).
(E) All of the above are true.

 

 

ANSWER: (E). See MPEP 2151, first paragraph.

 

Questions prepared by David E. Meeks, Esq. © 2017 Institute for Patent Studies, Inc. All rights reserved.

PatBar AIA QotW January 1, 2018

Which of the following is false?

(A) The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013.
(B) Pre-AIA prior art is applied to all applications filed on or after March 16, 2013.
(C) If a Request for Continued Examination (RCE) is filed on or after March 16, 2013, in an application that was filed before March 16, 2013, the application remains subject to pre-AIA 35 U.S.C. 102 and 103.
(D) Submission of an amendment including a claim that includes new matter on or after March 16, 2013, does not affect an application’s status as a pre-AIA application.
(E) Applications filed on or after March 16, 2013, are also subject to pre-AIA 35 U.S.C. 102 if the application has never contained a claim with an effective filing date on or after March 16, 2013, and has never claimed the benefit of an application that has ever contained such a claim.

 

 

ANSWER: (B). See MPEP 2150.

 

Questions prepared by David E. Meeks, Esq. © 2017 Institute for Patent Studies, Inc. All rights reserved.

FAQ: Review Courses and Current Exam Questions

“Some Patent Bar Review courses claim to have new, actual exam questions. How is this possible?”—D. H., Alexandria, VA

It’s not.

Shortly before the implementation of the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO) stopped releasing data specific to the Patent Bar Exam. In addition, people taking the Exam are now required to sign a non-disclosure agreement outlining severe penalties for anyone failing to abide by the agreement. This includes the release of Exam questions.

The same is true for any Review course. Any course attempting to cull new questions directly from the Exam faces penalties that may include severe financial loss or the immediate closure of their businesses.

More likely, these companies are being less than forthcoming about what constitutes “actual exam questions”.

Only PatBar® offers its students new questions written by Program Director David Meeks and based on his 25-plus years of experience in training his students to pass the Patent Bar Exam. PatBar® provides an exclusive, insider’s view of the questions you will see on Exam day, along with David’s tested lookup strategies to help you find—and find quickly—the answers to any questions you don’t recognize.

Patent Practitioner Retirement Rate Calculated

A patent attorney who tracks trends for International IP Law Group has calculated the retirement rate of patent practitioners, each a potential employment opportunity.

Research by Zachary Kinnaird shows that approximately 15% of patent practitioners leave the field after 20 years of practice. Based on removals from the Patent and Trademark Office roster, Kinnaird further calculates the annual rate of retirement at about two percent.

Each of these retirements represents a potential job opening, presuming the retiree’s position is not “filled” by attrition. Coupled with newly available positions, the data would seem to suggest that employment prospects are good for those newly registered to practice before the USPTO.

Read Kinnaird’s analysis here.

Update: Job Market Better than It Seems

It has not been easy recently for available lawyers to find employment. In 2011, for example, nearly half of all Law School graduates could not land a job in their chosen profession. When there’s a glut of lawyers, there are scant few openings.

Still, that means at least half of you are finding jobs. Why? Credentials. The more credentials you have, the more in-demand you are. Patent Lawyers either work for a law firm or in-house at a company, or they work for themselves and represent their own clients. Starting salaries are well above the norm, and can top $300,000 per year for those with some experience.

Meantime, the University of Denver Sturm College of Law says analysts tend to look at national employment figures, when some locations (including Colorado) expect to have more than one job opening for each graduate.

Bottom line: employers are looking for—and are hiring—the right people with the right credentials. In one month since mid-June, Patently-O has added 42 listings for patent attorneys and agents, in numerous locations including California, Florida, Minnesota, Nevada, New York, Pennsylvania, South Carolina, Texas and Virginia.

Who Owns Inventions by Students?

Students pay for their education as a rule, so what if they invent something in the course of their study? It’s not the same as an employment situation. So, who owns the intellectual property? If it’s patentable, who gets to apply?

There is no pat answer, since the field is still very much in flux.

A few years ago, a student at University of Missouri developed a smartphone app that became very popular and, for him, very profitable. Once the University got wind of this, its lawyers jumped in and demanded a share—of the ownership and the profits.

UM eventually backed down, and several colleges revamped their rules to limit their rights to inventions created at the direction of staff. Studies have shown, however, that traditional rules used by colleges to retain ownership of work done either by staff or by students is largely still in place.

Venue “Status Quo” Preserved By Federal Circuit

Without additional legislation that would lead to a change, venue in a patent case is proper in any jurisdiction in which the defendant does business—so says the US Court of Appeals for the Federal Circuit.

In a case decided in April 2016, TC Heartland was accused by Kraft Foods of infringing Kraft’s patents with respect to sales by the defendant of water-enhancing products in Delaware. TC Heartland argued in its response that the case should be dismissed or transferred, saying Congress intended for such cases to be heard where a defendant company “resides”, in this case, Indiana. The district court rejected the case, and TC Heartland filed a writ of mandamus with the Federal Circuit.

In its rejection, the Federal Circuit noted the consistency with which the broad interpretation of corporate “residence” as written in VE Holding v. Johnson Gas Appliance has been considered prevailing law, and that Congress has no intent to change it. The Federal Circuit called TC Heartland’s argument “utterly without merit or logic”.

 

Credit: McDermott Will & Emery via the National Law Review. Read the full story here.

Invalidating a competitor’s patent: too easy?

Very few people have heard of it, but a case currently in front of the Supreme Court of the United States may have a significant impact on how patents are reviewed after they are granted.

In Cuozzo Speed Technologies v. Lee, the nation’s highest court is weighing arguments over whether the United States Patent and Trademark Office can use a different standard than the one used by federal courts to determine the validity of a patent that is being challenged. More than that, writes Forbes contributor David Pridham, the court is questioning the “bizarre” Inter Partes Review system because nearly nine of every 10 challenges brought to the Patent and Trial Appeal Board ended with the cancellation of one or more patent claims. More than two-thirds of those challenges, he writes, were brought by defendants facing patent infringement suits.

“Whatever else you call this ‘bizarre’ system—BusinessWeek last week called it a ‘patent death squad’—it’s clearly a great way for infringers to escape the court’s justice,” writes Pridham. “It has also proved to be a lucrative get-rich-quick scheme for financial speculators, who short the stock of a company owning a valuable patent, then file an IPR against that company and watch the stock drop as investors react to being put in the crosshairs of the ‘patent death squad’.”

Read the full article here.