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.
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.”
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.
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.
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.”
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.
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.