Week of May 29, 2017

Which of the following are 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.

Week of May 22, 2017

AlwaysNervous Co. (ANC) has filed a patent application and the company is very concerned about it. ANC has invested a great deal of money in their invention and the future of the company depends on patenting this invention.

One of ANC’s competitors BNC is also concerned about developments in their industry. On a regular basis they check the public records to see what patent publications or patents are owned by ANC.

BNC discovers a patent application publication of ANC. The application was published two weeks ago.

BNC was introduced to 37 CFR 1.290 as soon as it became effective by their patent attorney. Since BNC has developed a wide variety of prior art references relating to their field, BNC asks their patent attorney when it becomes possible to file a third party submission in a patent application.

The attorney makes the following statements. Which ones are true?

(A) BNC may file a submission at any time.
(B) BNC must determine when a Notice of Allowance will issue and file the submission before the date of the Notice.
(C) BNC may file the submission within six months after the publication date of the application.
(D) If no Notice of Allowance has issued, BNC must file the submission before the first Office action.
(E) If no Notice of Allowance has issued, the submission must be filed within six months after the date on which the application is first published by the Office, or the date of the first rejection of any claim by the examiner during the examination of the application, whichever is later.

 

 

ANSWER: (E). See MPEP 1134.01 and 37 CFR 1.290(b).

A third-party preissuance submission statutorily must be made in a patent application before the earlier of:

(a) the date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or

(b) the later of

(i) six months after the date on which the application is first published under 35 U.S.C. 122 by the Office, or

(ii) the date of the first rejection under 35 U.S.C. 132 of any claim by the examiner during the examination of the application.

Note that a third-party submission under 37 CFR 1.290 is filed on its date of receipt in the Office as set forth in 37 CFR 1.6. The holiday/weekend rule set forth in 37 CFR 1.7(a) applies to a third-party submission under 37 CFR 1.290.

All third-party submissions must be filed prior to, not on, the dates identified in 37 CFR 1.290(b).

For example, if the day prior to the date that is six months after publication of an application which has not been allowed but which application was subject to a first Office action including a rejection of at least one claim more than six month previously is a Saturday, the submission may be timely filed on the next business day, e.g., the following Monday via Priority Mail Express® service pursuant to 37 CFR 1.10, hand delivery or preferably via the Office’s dedicated Web-based interface for preissuance submissions.

 

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

Week of May 15, 2017

Inventor A had made an electronics invention that was completed and ready for patenting on March 16, 2013. Since there was a meeting of the IEEE in the following week, the inventor prepared a detailed disclosure of the invention (including a written description including the best mode, and how to make and use the invention including several drawings) and provided an electronic copy to the publication director at the meeting. On the next day, March 24, 2013, the invention disclosure was published on the IEEE Website which was available to all of the members and also the public at large. The IEEE Website was well known to those involved in the electronics industry. The inventor is interested in patenting the invention.

What should the inventor do next?

(A) File a provisional application on or before March 24, 2014.
(B) File a nonprovisional application on or before March 24, 2014.
(C) Wait until marketing shows that the invention will be a success and then file a patent application.
(D) (A) and (B) are correct.
(E) None of the above.

 

 

ANSWER: (D). See MPEP 717, first paragraph and 35 USC 102(b)(1).

“35 U.S.C. 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) with respect to the claimed invention if:

(1) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(2) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”

 

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

Week of May 8, 2017

The president of a new start-up company realizes that having patents will help their company succeed in a number of ways, including financing and protecting them from other competitors. One invention seems the most promising and the company wants to have it patented as soon as possible. What should the company do?

(A) File the application in the normal way since there are no provisions to speed up the process.
(B) File the application with a letter requesting “the best service possible.”
(C) File the application indicating that one of the inventors is over 65 years of age.
(D) File the application along with a petition to make special under the accelerated examination program.
(E) File the application along with a request for prioritized examination.

 

 

ANSWER: (E). See MPEP 708.02(b) and 37 CFR 1.102(e).

Accelerated examination promises the following:

“The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application.”

Prioritized examination promises the following:

“The goal for handling applications under prioritized examination is to provide, on average, a final disposition within twelve months of prioritized status being granted.”

 

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

Week of May 1, 2017

Which would NOT be prior art under 35 USC 102(a)(1) in an AIA application filed on or after March 16, 2013?

(A) Patents claiming or describing the same invention.
(B) Descriptions of the claimed invention in a printed publication.
(C) Public use of the claimed invention.
(D) Placing the claimed invention on sale.
(E) None of the above.

 

 

ANSWER: (E). See MPEP 706.02(a)(1), subsection I, 35 USC 102(a)(1) and 35 USC 100 (note).

 

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

Week of April 24, 2017

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).”

 

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

Week of April 17, 2017

Jones Corp. filed a nonprovisional patent application for an important invention in September 2016. The company is the applicant. Their patent attorney who has a power of attorney has been going through a difficult divorce and Jones Corp. is unsure if their representative will be able to give his best effort going forward. What would be the best way to handle this situation?

(A) The power of attorney may be revoked at any time by the applicant and the applicant may hire another practitioner.
(B) Jones may revoke the attorney’s power of attorney and authorize the attorney under 37 CFR 1.34 to handle each separate requirement as time goes along.
(C) The company may revoke the power of attorney and act as their own representative.
(D) Both (A) and (B) would be proper.
(E) All of the answers (A), (B) and (C) would be proper.

 

 

ANSWER: (D).

See MPEP 402.05(a), first and third paragraphs, and 37 CFR 1.36(a).

“A power of attorney may be revoked only by the applicant or patent owner. An assignee who is not the applicant may revoke a power of attorney only if the assignee becomes the applicant per 37 CFR 1.46(c) (which requires compliance with 37 CFR 3.71 and 3.73).

“This … does not preclude a practitioner from acting pursuant to 37 CFR 1.34, if applicable. See MPEP § 402.03 for information pertaining to acting in a representative capacity.”

Note that Jones Corp. is a juristic entity and must be represented by a patent agent or patent attorney before the USPTO. All papers submitted on behalf of a juristic entity must be signed by a patent practitioner. See 37 CFR 1.31 and 37 CFR 1.33(b)(3).

 

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

Week of April 10, 2017

Bracket Corp., a French company, filed a patent application in France in 2014. The invention had been very successful so the company was thinking of filing in several other countries. The company had a meeting with their patent representative to form a strategy going forward. The meeting resulted in their deciding to file an application in the U.S. no later than 12 months after the French filing date. The representative set the deadline in his office “deadline” software. Around two months before the deadline the company had been in turmoil since most of their top executives had been killed in an airplane accident over the Atlantic. The representative was told not to worry about any foreign applications in the near future. It is now 13 months after the filing of the application in France. What should the representative do?

(A) Get the authorization from the company and file the U.S. application claiming the benefit of the French application.
(B) Get the authorization from the company and file the U.S. application claiming the benefit of the French application, along with a petition under 37 CFR 1.55(c).
(C) No benefit for priority of the French application is possible since the delay was intentional.
(D) The company may file their application in the U.S. with no benefit claim.
(E) Both (C) and (D) correct.

 

 

ANSWER: (E).

See MPEP 213.03, subsection III, first and second paragraphs:

“Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right of priority under 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) or (b). As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.

“A petition under 37 CFR 1.55(c) requires:

“(A) the priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted in an application data sheet);

“(B) the petition fee as set forth in 37 CFR 1.17(m); and

“(C) a statement that the delay in filing the subsequent application within the twelve-month period (or six-month period in the case of a design application) set forth in 37 CFR 1.55(b) was unintentional.”

 

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

Week of April 3, 2017

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.

 

 

ANSWER: (B).

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.”

 

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

Week of March 27, 2017

The WaxLike Company (WLC) applied for a patent back in 2013 and the patent issued several weeks ago. A copy of the patent was received in the company’s legal department and copies were forwarded to the company officers and each one of the three inventors and the chief engineer. WLC owns the patent and it has not been assigned or licensed to any other party. All of the parties that received a copy of the patent were asked to review the patent and forward an email to the legal department if they realize there is any problem. The legal department received three emails.

One of the inventors admitted that he failed to disclose several relevant patents when he was asked to disclose any and all information relating to the invention at the time the legal department was drafting an IDS for submission in order to meet their legal duties under 37 CFR 1.56. The prior art was never found by the examiner.

The chief engineer admitted that she had signed the oath submitted with the application for one of the inventors that was on vacation on the day of the signings.

The company president admitted that he coerced the chief engineer to include an inventor who was a supervisor and had nothing to do with the invention.

WLC realizes that they may be subject to a lawsuit relating to the validity of the patent in the near future. What should WLC do?

(A) File a reexamination to correct the deficiencies listed above.
(B) File a reissue to correct the deficiencies listed above.
(C) File a certificate of correction to correct the deficiencies listed above.
(D) File a supplemental examination to correct the deficiencies listed above.
(E) None of the above.

 

 

ANSWER: (D).

A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent. If the certificate issued indicates that a substantial new question of patentability is raised by 1 or more items of information in the request, the Director shall order reexamination of the patent. See MPEP 2802 and 35 U.S.C. 257(a)-(b).

The information presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under 35 U.S.C. 101 and 112.

Note that 37 CFR 1.620(g) provides that, if the Office becomes aware, during the course of a supplemental examination or of any ex parte reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding, that a material fraud on the Office may have been committed in connection with the patent requested to be examined, the supplemental examination proceeding or any ex parte reexamination proceeding ordered under 35 U.S.C. 257 will continue. The matter will be referred to the U.S. Attorney General in accordance with 35 U.S.C. 257(e).

Also refer to MPEP 2823 for information on the differences between a reexamination and a reexamination ordered in a supplemental examination.

An SE may be used to allow the USPTO to review possible charges of inequitable conduct during the examination of the patent application (and immunize the patent owner from charges of inequitable conduct), which is not available in any other post-grant proceedings.

 

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