How many...how much/which one?
Upon filing in the U.S. Patent and Trademark Office, an original, non provisional patent application contains the following claims:
Claim 1 is independent. Claim 2 depends from Claim 1. Claim 3 depends from Claim 2. Claim 4 depends from Claim 2 or 3. Claim 5 depends from Claim 3. Claim 6 depends from Claim 2, 3 or 5. The application contains only the foregoing claims. How many dependent claims are there for fee calculation purposes?
8 independent claims
Explanation: This is the sum of 1 (Claim 2 depends on Claim 1) plus 1 (Claim 3 depends on Claim 1) plus 2 (Claim 4 depends on Claims 2 or 3) plus 1 (Claim 5 depends on Claim 3) plus 4 (Claim 6 depends on Claims 2, 3 or 5).
A claim in an application recites “[a] composition containing: (a) 35-55% polypropylene; and (b) 45-65% polyethylene.” The sole prior art reference describes, as the only relevant disclosure, a composition containing 34.9% polypropylene and 65.1% polyethylene. In accordance with U.S. Patent and Trademark Office rules and procedures the primary examiner should properly:
(A) Indicate the claim allowable over the prior art because there is no teaching, motivation or suggestion to increase the amount of polypropylene from 34.9% to 35% and decrease the amount of polyethylene from 65.1% to 65%.
(B) Reject the claim as anticipated by the prior art reference.
(C) Reject the claim as obvious over the prior art reference.
(D) Reject the claim alternatively as anticipated or as obvious over the prior art reference.
(E) None of the above.
The correct answer is (C).
Explanation: The newly claimed material composition does not fall into a range specifically covered by the prior art. So, a rejection based on anticipation is not appropriate. However, the composition is so close to the prior art composition that it may be considered as obvious to someone familiar with these materials. Once a patent examiner makes an “obvious rejection”, the burden shifts to the patent agent to either justify why the claim is not obvious or to drop the claim.
What penalty may result from failing to disclose known material prior art?
Answer: c) The patent may be invalidated due to inequitable conduct.
Explanation: Failure to disclose material prior art can lead to claims of inequitable conduct, invalidating the patent.
Which of the following is a key advantage of filing under the PCT?
Answer: c) Delay in national phase filing costs while securing an international filing date.
Explanation: The PCT provides a streamlined process and additional time to decide on national filings.
Who can request a reexamination of a patent?
Answer: c) Anyone, including the patent owner or a third party.
Explanation: Reexaminations can be initiated by any party presenting prior art that raises a substantial new question of patentability.
On March 16, 2009, Marcy had an idea to make a lip gloss that conveys multiple fruit flavors when someone is kissed. She worked diligently to perfect her idea. However, when she tried out various blends of lip gloss with her friends, they all conveyed the flavor of vegetables rather than fruits. But, Marcy continued to try different compositions. Finally, on July 23, 2010, her most recent blend had the desired fruit-flavor result. Elated, she concluded her experimentation and wore her new lip gloss at a party that evening. Later, in September, 2011, one of her friends tells Marcy that she knows a patent agent and suggests that he might be able to help Marcy get a patent for her lip gloss invention. If you were the patent agent, how would you advise Marcy?
(A) Explain to Marcy the procedures and expenses associated with filing a patent application.
(B) Advise Marcy that too much time has passed since her initial idea to obtain a patent.
(C) Offer to make a preliminary search to determine if anyone had previously received a patent for a similar flavored lip gloss invention.
(D) Advise Marcy that wearing the lip gloss at the party on July 23, 2010 was a public disclosure more than a year ago that now precludes patenting.
(E) None of the above.
The correct answer is (D), because more than a year has passed since Marcy’s public disclosure. The fact that she was unaware of the limitation until it was too late is of no consequence.
What should an attorney do if they discover their client intentionally withheld material prior art?
Answer: c) Advise the client to disclose the prior art to the USPTO.
Explanation: Attorneys must act in good faith and uphold duty of candor to the USPTO.
What correspondence can be transmitted by fax?
A CPA filed under 37 CFR 1.53(d), amendments, declarations, petitions, information disclosure statements (IDS's), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examinations (RCE's), assignment documents, issue fee transmittals and authorizations to charge deposit accounts.
A rejection based on 35 U.S.C. 102(b) can be overcome by:
A) Persuasively arguing that the claims are patentably distinguishable from the prior art.
B) Amending the claims to patentably distinguish over the prior art.
C) Perfecting priority under to an earlier filed U.S. nonprovisional application or international application.
D) Perfecting priority claim to an earlier filed provisional application.
E) All of the above.
Answer: E) All of the above
CAVEAT: There is the possibility of avoiding the 1 year statutory bar under 102(b) if the last day of the 1 year grace period ends on a Saturday, Sunday, or Federal holiday, in which case the application may be filed on the next business day.
In accordance with the MPEP and USPTO rules and procedure, correspondence transmitted to the USPTO by facsimile is not permitted in certain situations. Which of the following facsimile transmissions to the USPTO will be accorded a date of receipt by the USPTO?
(A) Facsimile transmission of a request for reexamination under 37 CFR 1.510 or 1.913.
(B) Facsimile transmission of drawings submitted under 37 CFR 1.81, 1.83 through 1.85, 1.152, 1.165, 1.174, or 1.437.
(C) Facsimile transmission of a response to a Notice of Incomplete Nonprovisional Application for the purpose of obtaining an application filing date.
(D) Facsimile transmission of a correspondence to be filed in a patent application subject to a secrecy order under 37 CFR 5.1 through 5.5 and directly related to the secrecy order content of the application.
(E) Facsimile transmission of a continued prosecution application under 37 CFR 1.53(d) and an authorization to charge the basic filing fee to a deposit account.
Answer: Choice E
MPEP § 502.01, and 37 C.F.R. § 1.6(d)(3). MPEP 502.01 reads, "The date of receipt accorded to any correspondence permitted to be sent by facsimile transmission, including a continued prosecution application (CPA) filed under 37 C.F.R. 1.53(d), is the date the complete transmission is received by an Office facsimile unit...An applicant filing a CPA by facsimile transmission must include an authorization to charge the basic filing fee to a deposit account or to a credit card." Choice (A) is incorrect because 37 C.F.R. 1.6(d) states, "Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: ...(5) A request for reexamination under §1.510 or § 1.913." Choice (B) is incorrect because 37 C.F.R. 1.6(d) also states, "Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: ...(4) Drawings submitted under § 1.81, 1.83 through 1.85, 1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72." Choice (C) is incorrect because 37 C.F.R.1.6(d) also states, "Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: ...(3) Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in 1.8(a)(2)(i)(A)..." 37 C.F.R. 1.8(a)(2)(i)(A) reads, "The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date..." Choice (D) is incorrect because 37 C.F.R. 1.6(d) also states, "Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: ...(6) Correspondence to be filed in a patent application subject to a secrecy order under § 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application."
What is the deadline for filing a reply to a non-final office action without an extension?
Answer: b) 3 months.
Explanation: The default response period for a non-final office action is three months, with extensions available up to six mont
A question has been reported to involve Joe Blockhead, where your client Joe Blockhead files a nonprovisional application which claims the benefit of a nonprovisional application. You receive a Notice of Allowance and Blockhead decides that he wants to extend the term of his patent and remove the benefit. How do you enter an amendment to this?
Answer: Do not pay the issue fee and file an RCE with an amendment or ADS.
Explanation: After the notice of allowance, entry of an amendment or ADS is not a matter of right, so in order to have the amendment entered, you must file an RCE.
In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following paper is precluded from receiving the benefit of a certificate of mailing or transmission under 37 CFR 1.8?"
(A) An amendment, replying to an Office action setting a period for reply, transmitted by mail with a certificate of mailing to the USPTO from a foreign country.
(B) An amendment, replying to an Office action setting a period for reply, transmitted by facsimile with a certificate of transmission to the USPTO from a foreign country.
(C) An information disclosure statement (IDS) under 37 CFR 1.97 and 1.98 transmitted after the first Office action.
(D) A request for continued examination (RCE) under 37 CFR 1.114.
(E) An appeal brief.
The correct answer is (A). The certificate of mailing does not apply to papers mailed in a foreign county. See MPEP 512. The items in the remaining answers can benefit from a certificate of mailing or transmission.
An interview should be had only when the nature of the case is such that
Answer: the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and applicant, thereby advancing the prosecution of the application
ALSO: When interviews are available prior to the first Office action (37 CFR 1.33(a)(2)), that interviews for "sounding out" the examiner are not permitted (MPEP 713.03), and when an applicant is permitted an interview following a final rejection (MPEP 713.09).
TRUE OR FALSE
Regarding an oath or declaration, there is a minimum age required to sign an oath or declaration.
FALSE: There is no minimum age required to sign an oath or declaration so long as the party understands what he or she is signing. See 37 CFR 1.63(a)(1). (13 year old is ok)
A registered practitioner filed a design patent application on December 30, 2003. The application was filed with an inventor-executed declaration naming Jon Jones as the sole inventor, who has not assigned the invention and is not under an obligation to assign his invention. The filing receipt was recently received, indicating that the application will be published on Thursday, July 1, 2004. In reviewing the filing receipt the practitioner realizes that the typed name of the inventor contained a typographical error (an "h" was missing) and that the correct spelling was John Jones. Which of the following would be the course of action at the least expense to correct the error in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) The practitioner should file a request under 37 CFR 1.48 to correct the inventorship of the application with a new declaration under 37 CFR 1.63 signed by John Jones (with the correct spelling of this name), a statement by Mr. Jones as to how the error occurred and that the error was without deceptive intention, and the processing fee set forth in 37 CFR 1.17(q).
(B) The practitioner should file a petition under 37 CFR 1.182 and the petition fee set forth in 37 CFR 1.17(h), requesting correction of the spelling of the inventor's name.
(C) The practitioner should file a request for a corrected filing receipt and a separate letter to the Office explaining that the declaration contains a typographical error, that the correct spelling of the inventor's name is John Jones, and requesting correction of the Office records.
(D) The practitioner should expressly abandon the application, and file a continuation with a new declaration with the correct spelling.
(E) The practitioner should call the examiner and tell the examiner that the inventor's name is wrong, and ask for the examiner to change the name on the declaration.
The correct answer is (C). See MPEP 605.04(b), which states "Except for correction of a typographical or transliteration error in the spelling of an inventor's name, a request to have the name changed to the signed version or any other corrections in the name of the inventor(s) will not be entertained.When a typographical or transliteration error in the spelling of an inventor's name is discovered during pendency of an application, a petition is not required, nor is a new oath or declaration under 37 CFR 1.63 needed. The USPTO should simply be notified of the error and reference to the notification paper will be made on the previously filed oath or declaration by the Office." (A), (B) and (D) could result in the spelling of Jon's name being corrected in USPTO records, but would do so at a higher cost to applicant, and therefore neither one is the most correct answer. Furthermore, (A) is also not correct in that if a request to add John Jones as an inventor was to be filed, another request (and fee) to delete Jon Jones would be required. (B) is wrong because a petition under 37 CFR § 1.182 is not required if the error in the name is a typographical error, and the facts specify that the error in the spelling of "John" as "Jon" is a typographical error. (D) is not correct because not only would filing a continuation create an additional expense, but filing a new application could also delay examination. (E) is not correct because pursuant to 37 CFR 1.2, business with the Office is to be conducted in writing, and, even more importantly, because "it is improper for anyone, including counsel, to alter, rewrite, or partly fill in any part of the application, including the oath or declaration, after execution of the oath or declaration by the applicant." MPEP 605.04(a).
Which of the following documents it NOT open to public inspection?
A) The abandoned parent application of a divisonal application. A patent was granted on the divisional application, which refers to the abandoned parent application.
B) Assignment document relating to both an issued patent and a patent application not published under 35 USC 122(b)
C) Assignment document relating to a pending reissue application
D) Copy of assignment record relating to both a pending patent application and an abandoned patent application not published under 35 USC 122(b).
E) Assignment document relating to both an abandoned patent application not published under 25 USC 122(b) and a pending reissue application
Answer: The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection (for example, a patent), then the entire document will be open.
D) is correct, 37 C.F.R. § 1.14(a)(1)(iv); MPEP 103, application files are available upon request because the divisional application refers to the abandoned parent application, and the division issued as a patent, causing the application to be open to inspection. (B), (C) and (E) are wrong and (D) is correct. MPEP § 301.01.
Which of the following is NOT required to receive a filing date under 37 CFR 1.53(b). The selections are as follows:: (a) The basis filing fee,. (b) a specification,. (c) a description,. (d) at least one claim, and. (e) any required drawing..
The correct answer is (a). The filing fee can be filed after the filing date. See 37 CFR 1.53(b).
In accordance with the USPTO rules and the procedures set forth in the MPEP, a petition to make a patent application special may be filed without fee in which of the following cases?
A) The petition is supported by applicant's birth certificate showing applicant's age is 62.
(B) The petition is supported by applicant's unverified statement that applicant's age is 65.
(C) The petition is supported by applicant's statement that there is an infringing device actually on the market, that a rigid comparison of the alleged infringing device with the claims of the application has been made, and that applicant has made a careful and thorough search of the prior art.
(D) The petition is accompanied by a statement under 37 CFR 1.102 by applicant explaining the relationship of the invention to safety of research in the field of recombinant DNA research.
(E) The petition is accompanied by applicant's statement explaining how the invention contributes to the diagnosis, treatment or prevention of HIV/AIDS or cancer.
Answer: B
With an application where all the claims have been rejected, what can the applicant do to avoid abandonment?
A) Amend the application so that all the claims or all the remaining claims are allowable
B) File an appeal by filing a notice of appeal
C) file a proper RCE within the time for response/extensions
Also can abandon the application in favor of a continuing application
A patent application includes the following Claim 1:
Claim 1. A method of making an electrical device comprising the steps of:
(i) heating a base made of carbon to a first temperature in the range of 1875°C to 1925°C;
(ii) passing a first gas over said heated base, said first gas comprising a mixture of hydrogen, SiCl4, phosphorus, and methane, whereby said first gas decomposes over said heated base and thereby forms a first deposited layer of silicon, phosphorus and carbon on said heated base;
(iii) heating said base having said deposited layer to a second temperature of approximately 1620°C; and
(iv) passing a second gas over said base heated to said second temperature, said second gas consisting of a mixture of hydrogen, SiCl4, AlCl3, and methane, whereby said second gas decomposes over said heated base to form a second deposit layer adjacent said first layer, said second layer comprising silicon, aluminum and carbon.
Assuming proper support in the specification, which of the following claims, if presented in the same application, is a proper claim in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) Claim 2. The method of claim 1, wherein said first temperature is in the range of 1800°C to 2000°C.
(B) Claim 3. The method of claim 1, wherein said first gas further comprises an inert gas.
(C) Claim 4. The method of claim 1, wherein said second gas further comprises Argon.
(D) Claim 5. The method of claim 1, wherein said first gas is an inert gas such as Argon.
(E) Claim 6. The method of claim 1, wherein said second gas consists of a mixture of hydrogen, SiCl4 and AlCl3 only.
Answer: B. 37 CFR § 1.75(c). Answers (A) and (E) are incorrect because they improperly seek to broaden the parent claim. 37 CFR § 1.75(c). Answer (A) broadens the range by going below the stated limit. Answer (E) broadens by trying to remove a recited component of the second gas, and covering subject matter that is not covered by the parent claim. Answer (C) is incorrect because claim 1 uses the close ended claim term "consists" in connection with the second gas, which precludes the addition of further components to the second gas in claim 4. Answer (D) is incorrect because the use of the exemplary language "such as" is improper is improper under 35 U.S.C. § 112, second paragraph, and because it is inconsistent with claim 1. See MPEP § 2173.05(d)
Examples of situations where ownership need not be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a small entity statement (MPEP § 509.03); signs a statement of common ownership of two inventions (MPEP § 706.02(l)(2)); signs a NASA or DOE property rights statement (MPEP § 151); signs an affidavit under 37 CFR 1.131 where the inventor is unavailable (MPEP § 715.04); signs a certificate under 37 CFR 1.8 (MPEP § 512); or files a request for reexamination of a patent under 37 CFR 1.510 (MPEP § 2210).
Answer: signs a small entity statement (MPEP § 509.03)
The question involves a continuation application that is filed without all the drawings that were in the prior application. The continuing application properly claims the benefit of the prior application. The return postcard contains a note than only 4 of the 5 drawings were received. A Notice of Omitted Items is sent to the applicant according the application a filing date and notifying the applicant of the missing drawing. The missing drawing shows a claimed feature of the invention, and for this reason the applicant needs to benefit from the earlier filing date to avoid potential prior art.
Answer: if the continuing application contained a benefit claim of the prior application, the drawing may be added by filing an amendment within 2 months of the Notice. See MPEP 201.06(c), Part IV, 601.01(g) and 37 CFR 1.57(a).
Under 37 CFR.1.97 requirements, what is considered a "reasonable time" for information to be submitted to the Office of Information?
Answer: within 3 months after an individual designated in 37 CFR 1.56(c) becomes aware of the information or within 3 months of the information being cited in a communication from a foreign patent office in a counterpart foreign application.
Further explanation: This undertaking by the Office to consider information would be available throughout the pendency of the application until the point where the patent issue fee was paid. For example, this would include after the filing of a notice of appeal or at any other time during the appeal of a patent application, so long as the application is still pending. In each case the appellant must file both the statement and fee.
In this scenario, prosecution results in the rejection of claim 1, claim 2 was objected to as being dependent on a rejected claim, and independent claim 3 is allowed. The rejection of claim 1 is appealed and the Board affirms the rejection. Appellant has filed no response to the decision of the Board and the time for an appeal to the court or civil action has expired. What is the most appropriate response by the examiner.
Answer: The examiner should cancel claims 1 and 2 and allow the application with claim 3 only. See MPEP 1214.06, Part II.