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.

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.