Category: Studies

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.

Week of January 9, 2017

The president of a new start-up company realizes that having patents will help their company succeed in a number of ways, including financing and protecting them from other competitors. One invention seems the most promising and the company wants to have it patented as soon as possible. What should the company do?

(A) File the application in the normal way since there are no provisions to speed up the process.
(B) File the application with a letter requesting “the best service possible.”
(C) File the application indicating that one of the inventors is over 65 years of age.
(D) File the application along with a petition to make special under the accelerated examination program.
(E) File the application along with a request for prioritized examination.

 

 

ANSWER: (E). See MPEP 708.02(b) and 37 CFR 1.102(e).

Accelerated examination promises the following:

“The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application.”

Prioritized examination promises the following:

“The goal for handling applications under prioritized examination is to provide, on average, a final disposition within twelve months of prioritized status being granted.”

 

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

Week of January 2, 2017

Which would NOT be prior art under 35 USC 102(a)(1) in an AIA application filed on or after March 16, 2013?

(A) Patents claiming or describing the same invention.
(B) Descriptions of the claimed invention in a printed publication.
(C) Public use of the claimed invention.
(D) Placing the claimed invention on sale.
(E) None of the above.

 

 

ANSWER: (E). See MPEP 706.02(a)(1), subsection I, 35 USC 102(a)(1) and 35 USC 100 (note).

 

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

Week of December 26, 2016

When filing a nonprovisional application, which of the following are true?

(A) The inventorship of a nonprovisional application is the inventor or inventors set forth in the application data sheet filed before or concurrently with the inventor’s oath or declaration.
(B) If an application data sheet is not filed before or concurrently with the inventor’s oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor’s oath or declaration.
(C) Once an application data sheet or the inventor’s oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to 37 CFR 1.48.
(D) If neither an application data sheet nor the inventor’s oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers.
(E) All of the above.

 

 

ANSWER: (E). See MPEP 602.01, subsection I, and 37 CFR 1.41(b).

“Applicants who wish to take advantage of the ability to name the inventors in an application data sheet rather than the inventor’s oath or declaration should take care to ensure that an application data sheet under 37 CFR 1.76 that is signed in compliance with 37 CFR 1.33(b) is present on filing, or at least prior to the filing of any inventor’s oath or declaration in the application. If an inventor’s oath or declaration is filed in the application prior to the filing of an application data sheet under 37 CFR 1.76 that is signed in compliance with 37 CFR 1.33(b), the inventorship named in the inventor’s oath or declaration controls. For example, if an inventor’s oath or declaration naming only inventor ‘A’ is present on filing without an accompanying application data sheet, and a signed application data sheet is filed naming inventors ‘A’ and ‘B’ is subsequently filed in the application, the application will be treated as naming only inventor ‘A’ (the inventor provided in the inventor’s oath or declaration) until the inventorship is corrected under 37 CFR 1.48(a).”

 

Questions prepared by David E. Meeks, Esq. © 2016 Institute for Patent Studies, Inc. All rights reserved.

Week of December 19, 2016

A company is filing a nonprovisional utility application. What is required to receive a filing date?

(A) A specification.
(B) A specification and at least one claim.
(C) A specification, claims and drawings.
(D) A specification, claims, drawings and an oath or declaration.
(E) A specification, claims, drawings, an oath or declaration and all appropriate fees.

 

 

ANSWER: (A). See MPEP 601.01(a), subsection II, first paragraph:

“For applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, except for design applications, a filing date is granted to a nonprovisional application when a specification, with or without claims, is received in the Office. The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office.”

 

Questions prepared by David E. Meeks, Esq. © 2016 Institute for Patent Studies, Inc. All rights reserved.

Week of December 12, 2016

Chris is an independent inventor working out of her garage. She has made many inventions but has had little success at marketing. She has talked to several companies and she may sometime in the future link up with one of them. Her main interest at this time is patenting. She would like to apply for patents at the lowest cost possible. She is attempting to discuss this with a practitioner but has had little luck in finding one to discuss the fees and other factors relating to filing a patent application. What should she do?

I. Contact the USPTO Inventors Assistance Center by phone to discuss the fees (and discounts) in patent applications by first opening the USPTO Website and searching for contact information.

II. Contact a practitioner and ask where an explanation of the patent fees (and discounts) can be found.

III. Do an Internet search.

IV. Go to the local public library.

(A) Selection I is the best answer.
(B) Selection II is the best answer.
(C) Selection III is the best answer.
(D) Selection IV is the best answer.
(E) All of the above are good answers.

 

 

ANSWER: (E). All of the above answers may result in locating proper and current information explaining the fees in the USPTO. This would probably be finding a reference to the MPEP and MPEP section 509 on the payment of fees. Many may suggest that using the Internet would be the fastest and easiest way to do this.

 

Questions prepared by David E. Meeks, Esq. © 2016 Institute for Patent Studies, Inc. All rights reserved.

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.