Category: Studies

Week of March 20, 2017

What is required in a submission under 37 CFR 1.501?

(A) The submission must state the forum and proceeding in which patent owner filed each statement.
(B) The submission must state the specific papers and portions of the papers submitted that contain the statements.
(C) The submission must state how each statement submitted is a statement in which patent owner took a position on the scope of any claim in the patent.
(D) All of the above are correct.
(E) None of the above are correct.

 

 

ANSWER: (D). See 37 CFR 1.501(a)(3).

 

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

Week of March 13, 2017

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.

Week of March 6, 2017

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.

Week of February 27, 2017

Which of the following is/are 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.

Week of February 20, 2017

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.

Week of February 13, 2017

Which of the following is/are 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.

Week of February 6, 2017

Which of the following is/are 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.

Week of January 30, 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 January 23, 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 January 16, 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.