Category: Studies

Week of December 19, 2016

A company is filing a nonprovisional utility application. What is required to receive a filing date?

(A) A specification.
(B) A specification and at least one claim.
(C) A specification, claims and drawings.
(D) A specification, claims, drawings and an oath or declaration.
(E) A specification, claims, drawings, an oath or declaration and all appropriate fees.

 

 

ANSWER: (A). See MPEP 601.01(a), subsection II, first paragraph:

“For applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, except for design applications, a filing date is granted to a nonprovisional application when a specification, with or without claims, is received in the Office. The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office.”

 

Questions prepared by David E. Meeks, Esq. © 2016 Institute for Patent Studies, Inc. All rights reserved.

Week of December 12, 2016

Chris is an independent inventor working out of her garage. She has made many inventions but has had little success at marketing. She has talked to several companies and she may sometime in the future link up with one of them. Her main interest at this time is patenting. She would like to apply for patents at the lowest cost possible. She is attempting to discuss this with a practitioner but has had little luck in finding one to discuss the fees and other factors relating to filing a patent application. What should she do?

I. Contact the USPTO Inventors Assistance Center by phone to discuss the fees (and discounts) in patent applications by first opening the USPTO Website and searching for contact information.

II. Contact a practitioner and ask where an explanation of the patent fees (and discounts) can be found.

III. Do an Internet search.

IV. Go to the local public library.

(A) Selection I is the best answer.
(B) Selection II is the best answer.
(C) Selection III is the best answer.
(D) Selection IV is the best answer.
(E) All of the above are good answers.

 

 

ANSWER: (E). All of the above answers may result in locating proper and current information explaining the fees in the USPTO. This would probably be finding a reference to the MPEP and MPEP section 509 on the payment of fees. Many may suggest that using the Internet would be the fastest and easiest way to do this.

 

Questions prepared by David E. Meeks, Esq. © 2016 Institute for Patent Studies, Inc. All rights reserved.

Question of the Week: December 5, 2016

Which of the following is true?

(A) A power of attorney must be signed by the applicant for patent or the patent owner.
(B) The word “applicant” refers to the inventor or all of the joint inventors or to the person applying for a patent as provided in 37 CFR 1.43.
(C) An assignee who is not the applicant may sign a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c).
(D) The power of attorney must be signed by someone who is authorized to act on behalf of the assignee-applicant.
(E) All of the above are true.

 

 

ANSWER: (E). See MPEP 402.02(a), subsection I.

 

Questions prepared by David E. Meeks, Esq. © 2016 Institute for Patent Studies, Inc. All rights reserved.

New Questions Added Each Week

For the week of November 28, 2016:

Gamma Company, an English yarn making firm, filed an application for their new invention in England on March 16, 2012. Their new invention was so successful that the firm decided to file applications in several other countries including the U.S. Since their U.S. representative had retired the company decided to use their in-house English patent agent John Johnson to file their application in the U.S. John filed the application electronically on March 16, 2013. Gamma was named as the applicant in the application. The application included a claim to the benefit of the English application in the transmittal letter. Four weeks later Gamma receives a filing receipt that includes a reference to the benefit claim. What should John do after receiving the filing receipt?

(A) Applicant is still required to submit the benefit claim by filing an ADS.
(B) Applicant is still required to submit the benefit claim by filing an amendment to the first sentence of the specification.
(C) Applicant is still required to file the benefit by submitting an ADS and a petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m).
(D) Nothing is required since the filing receipt included a reference to the benefit claim.
(E) None of the above is correct.

 

 

ANSWER: (A). MPEP 211.03, fourth paragraph:

“If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78 (e.g., if the benefit claim is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on a filing receipt. This is because the application will have been scheduled for publication on the basis of such information concerning the benefit claim. Applicant must still submit the benefit claim in the manner specified in 37 CFR 1.78 (i.e., in an ADS for applications filed on or after September 16, 2012, or by an amendment to the first sentence(s) of the specification or in an ADS for applications filed prior to September 16, 2012) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the benefit of a prior application. If, however, an applicant includes a benefit claim elsewhere in the application and the claim is not recognized by the Office as shown by its absence on a filing receipt, the Office will require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim. This is because the application will not have been scheduled for publication on the basis of the information concerning the benefit claim contained elsewhere in the application.”

 

Questions prepared by David E. Meeks, Esq. © 2016 Institute for Patent Studies, Inc. All rights reserved.

New Questions Added Each Week

For the week of November 21, 2016:

Kappa Company has filed a provisional application on a new bicycle. It is now December 18, 2013, and Kappa is running out of time to file a nonprovisional application on the same invention and their trusted representative is on vacation for four months. What is the quickest way to get an application on file and a filing date for the invention?

(A) File the application including a specification, claims and drawings and the basic filing fee and an oath or declaration. The application references the earlier provisional application.
(B) File the application with the specification, claims and drawings and the filing fee. The application references the earlier provisional application.
(C) File the application with the specification and drawings and the filing fee. The application references the earlier provisional application.
(D) File the application with the specification, claims and drawings.
(E) File the application with a reference to the provisional application indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application.

 

 

ANSWER: (E). On or after the above date in question, the applicant may receive a filing date with only the reference stated in answer (E). See MPEP 201.01 subsection I, third paragraph.

Questions prepared by David E. Meeks, Esq. © 2016 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.

New Questions Added Each Week

For the week of November 14, 2016:

Beta Company filed a patent application on September 16, 2012. The application has not been published as a patent and is still pending before the USPTO. Beta has been discussing a licensing agreement with Alpha Company and Alpha wants to access the patent files in the USPTO. Who may sign a written authority for access to the application?

(A) the applicant
(B) the practitioner of record
(C) the assignee
(D) an inventor
(E) any of the above

 

 

ANSWER: (E). See MPEP 104, subsection I, and 37 CFR 1.14(c).

Questions prepared by David E. Meeks, Esq. © 2016 Institute for Patent Studies, Inc. All rights reserved.

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.

MD Prof Wants Looser Restrictions for PBE—Likely?

A Baltimore, MD, law professor with extensive experience in patent law has written that he’d like to see any US lawyer qualify to sit for the Patent Bar Exam, essentially removing the existing restriction to only those in specific STEM fields. Is that likely to happen? A co-director of the Center for Intellectual Property and Entrepreneurship doesn’t think so.

Writing for Patently-O, University of Missouri School of Law Professor Dennis Crouch says the courts and Congress, together with the USPTO, intentionally shifted focus over the years toward detailed technological improvement, rather than a more abstract notion of an invention.

“My experience is that a technology-savvy patent attorney will be better able to cost-effectively understand the important technological details,” Crouch writes. “The technological-education requirement of the patent bar places one hurdle in that framework, but the market continues to operate in this area as well. For instance, many companies only hire patent attorneys with relevant experience in the appropriate technological area and don’t simply rely upon the ‘patent attorney’ status as a total qualifier.”