PatBar AIA QotW February 19, 2018

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.

PatBar AIA QotW February 12, 2018

What parts of 35 U.S.C. 102 have been eliminated by the AIA?

(A) 102(c)
(B) 102(d)
(C) 102(f)
(D) 102(g) (although some limited applicability remains)
(E) All of the above

 

 

ANSWER: (E). See MPEP 2151, paragraph 10.

 

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

PatBar AIA QotW February 5, 2018

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.

 

 

ANSWER: (E). See MPEP 2151, paragraph 8.

 

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

PatBar AIA QotW January 29, 2018

Which of the following is true?

(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.

 

 

ANSWER: (D). See MPEP 2202 and 37 CFR 1.501

 

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

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 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 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.