Which of the following is true with respect to AIA 35 U.S.C. 102(b)(2)(A) and (B) relating to U.S. patent documents that were not issued or published more than one year before the effective filing date of the claimed invention?
(A) The disclosure shall not be prior art to a claimed invention if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
(B) A disclosure shall not be prior art to a claimed invention if the subject matter had, before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(C) Only (A) is true.
(D) Only (B) is true.
(E) Both (A) and (B) are true.
Delta Company filed a nonprovisional application sometime before September 16, 2012, and today, September 16, 2016, they now want to file a continuation application. What would be the best way to handle the oath or declaration?
(A) File a copy of the oath or declaration from the prior application.
(B) File a new oath or declaration since the requirements have changed.
(C) It is not necessary to file an oath or declaration in the new application.
(D) All of the above are correct.
(E) None of the above is correct.
See MPEP 201.06(c), subheading II, third paragraph after the rule:
“[A] copy of the inventor’s oath or declaration submitted in a continuing application filed on or after September 16, 2012, must comply with requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012.
“[A] new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012. See MPEP § 602.05(a) for additional details regarding oaths or declarations in continuing applications filed on or after September 16, 2012.”
(A) The Office may not consider a patent owner claim scope statement when deciding whether to order or institute an administrative trial proceeding such as an IPR.
(B) A third party filing a statement can request in writing to maintain his/her identity in confidence, and it will be excluded from the patent file.
(C) Any person may file a statement of the patent owner in a proceeding before a Federal court or the USPTO in which the patent owner took a position on the scope of any claim of the patent.
(D) A patent owner statement submitter may state in the filing how any claim is patentable over any submitted patent owner claim scope statement.
(E) All of the above are true.
“Some Patent Bar Review courses claim to have new, actual exam questions. How is this possible?”—Darin H., Alexandria, VA…
It’s not—at least, not legally.
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 any release of Exam questions.
The same is true for any Review course. A company attempting to cull new questions directly from the Exam faces penalties that may include severe financial loss or the permanent closure of their businesses. At least one such course has made no updates whatsoever in all of 2018.
More likely, these companies are being, well, 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® gives you 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.
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.”
(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.
(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.
(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.
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.
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).”