Category: Studies

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.

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

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).”

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

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.”

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

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).”

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

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.

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

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.

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

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).

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

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).”

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

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.

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