Complete Guide to Unpublished Patent Bar Questions

This outline is a streamlined outline of all the unpublished Pat Bar Questions I could find on the net. There are three sources for this material:

1. The Pat Bar Questions Wiki
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent_Bar_Exam

2. MyPatentBar.com unpublished questions posts
http://mypatentbar.com/current-questions/

3. And any Ominprep reported unpublished questions (i bought the course, there are not much useful ones..but i included a few).
Can't link to Omniprep, its private copyrighted info, unfortunately (but I paraphrased all the questions).


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1. PCT RELATED QUESTIONS
1. Japan, 26bis (aka: the 16 months to correct priority question)
1. Applicant files in Japan, then files PCT one year later, but does NOT claim priority to previous application. What to do?
1. Correct Priority within 16 months from the first application. Usually corrected by transmitting the prior application to the IB or the RO. See PCT Rule 26bis.
2. Variant: Applicant files, then is notified that his referenced app number didn’t match the PCT filing date and that amendments must be made to correct. The problem was the months and dates got confused (DD/MM instead of MM/DD)…so what to do? Same thing, 16 months to correct.
2. Amending or a Missing Abstract (International vs. US app)
1. If an abstract is not supplied with the International app (as normally required), can the International Searching Authority amend or make one for you?
1. In international Apps, YES. "The ISA shall establish an Abstract (if missing) and the applicant within one month from the date of the ISA report submit comments on the ISA made abstract. " See rule PCT 38.1-.2
2. If it’s a USPTO app (non-international), they don't do anything for you…they will NOT provide an Abstract for you. It is a document that you need to submit. But they will amend an existing Abstract.
1. Note: if everything is in a condition for allowance, but you have a shitty Abstract, the Examiner will normally go ahead and fix it for you (by examiner's amendment).
3. This question turns on whether the application is international or a US app.
4. Variant: "If the ISA creates an Abstract, what can the Applicant do?"
1. "He may, within one month form the date of mailing of the ISA Report, submit comments on the ISA made Abstract."
3. The "What to submit to your RO, when the US is your RO and your entering the National Stage" Question.
1. If you file an International App, and you select the United States as your RO, what needs to be transmitted to the USPTO when you enter the National Stage?
1. Normally you have to pay the fee and transmit the a copy of the app to the RO, BUT since it's a US International App, and the PTO is already acting as your RO, they aready have your app!...SO, just pay the fee and this will act as constructive notice that the RO already has your app. See 1893.01(a)(1).
4. The "What can be Faxed when your entering the National Stage in the US" question.
1. The normal rule applies (MPEP 1834.01): you can't file PCT Apps to enter the national stage by fax.
5. The "Jap citizen files PCT app with the USPTO, but the app is in Japanese" question.
1. If the USPTO receives a PCT app in any language they don't understand (i.e. anything not English), they will STILL be nice enough to give you the filing date, but they'll send it off to the IB to be handled.
1. This will ALSO happen (the sending off to the Ib, and getting the filing date), if the Applicant is not a citizen of the US.
2. In sum, if a PCT app is sent to the USPTO and either (1) the app is not in English OR (2) the applicant is not a US citizen, the USPTO will still give them the filing date, but they will get rid of the app and send it to the International Bureau.
6. The "20, 30, 36 months" Question
1. Only one answer requires money to enter the 30 month National Stage…THAT'S the answer.
7. had a q about a pct filed w/o claims but everything else present, what can you do to keep certain filing date?

choices were

1. fax w/cert.

2. mail w/cert.

3. express mail.

4. wait for us/ro send invitation to correct & correct within given time.

5. all of the above.

8. The "PCT/102(e) Variations" (A "date" dump question -- can be difficult).
1. Very important process. The Set up…there is an earlier patent out there, say Patent A. Typically, it was a foreign filled app, that went PCT International, then was published and it issues. NOW, Application B is filled for the same subject matter. The question becomes: What is the earliest date that Patent A can be used as a 102(e) rejection (since its such a confusing app with multiple dates and all).
1. ANSWER: The question centers on whether the Prior Art app, App A, was filed before or after the AIPA convention that took place on November 29, 2000.
1. Prereqs: Before you begin this inquiry, make sure Patent A was published in English, AND it designates the US. If Patent was neither, then it will not have a 102(e) Prior Art date…meaning you can't use it for a 102(e) rejection (but maybe under 102(a)(b)).
2. The Two Rules
1. If IA filed BEFORE 11/29/2000, use the date the IA goes National.
2. If IA filed ON OR AFTER 11/29/2000, use the date the IA was filed.
9. Faxing National Stage Application
1. There is a question that asks whether you can fax your National Stage application.
1. No, you may not.
2. Four things that cannot be used in faxes:
1. Required by statute to be Certified.
2. A drawing
3. An international Patent.
4. A copy of the IA for the purpose of entering the National Phase.
10. PCT By-Pass Method
1. French App Filed. IAfiled, designating the US, claiming the French App. The IA app is published, in French. Some point within 30 months, without entering the National Stage, and instead files a IA Continuation. Is the Claim for French priority proper? Or is it Perfected?
1. Rule 1895.01: The claim for foreign priority under 119(a-d) must be made within 1 year of the filing of the Continuation, or within 1 prior to the filing of the IA. In addition, a Cert. copy of the forign priority patent/document must be provided by the applicant, unless the app has already entered national stage.
2. SO, the answer is: the Claim for French Priority WAS proper, but NOT perfected (procedure wise). So, all you need to do is file a copy of the patent doc, since the IA has not entered the National Phase, and the USPTO is not going to have a copy of that doc on hand.
11. PCT's Patent Term
1. A PCT app was filed in Germany before Nov 29, 2000 (it was filed in 1996), what date do you measure the Patent Term from?
1. Rule: You use the IA date for the Patent Term…NOT the Foreign Priority date. However, if the earlier Priority date was a National App, you use that date…not the IA filing date.
2. Example: If the IA is filed in 1997, and claims priority to a Jap patent filed in 1993, you use the IA date, to calculate the 20 year term.
1. BUT, if the IA is filed in 1997, and claims priority to a US patent filed in 1993, you use the earlier claimed 1993 date.
12. Missing Parts in a PCT Application
1. Question asks what to do, when there are two missing parts of a spec, and the Applicant files them both, albeit at different times.
1. Rule: The International Filing fee will be granted as of the date the correction is rec'd, however, there are only 30 days to file the missing parts….So, if one is under 30 days, and the second one is over 30 days…only the first is entered.
13. Correcting PCT Application when invited -- No Address
1. Obscure facts. Question asks how long you have to correct a problem, like a missing address, when you have been invited to correct the problem.
1. The RO gives a time between 10 and 30 days to correct the problem (10 > X > 30).
14. Correcting PCT Application -- Obvious Errors only.
1. Three Amendments are made to a PCT App.
1. Fix the misspelled word: "carr".
2. Adding a drawing that was accidently left out, but was included in a claimed benefit earlier app.
3. Adding a page to explain in the spec something clearly shown on a drawing.
2. RULE 1836: In PCT apps, only OBVIOUS can be correct. This includes, linguistic errors, spelling errors, and grammatical errors (so long as it doesn’t change the meaning when fixed). Chemical or Math forumlas cannot be fixed (unless fixed error would be common knowledge). BUT, (1) Omission of Entire Sheets CANNOT be fixed, you cannot rely on some claimed benefit app to show you meant to include it (or that it was obvious). The priority doc cannot be relied upon to show obvious error.
3. SO, only (i) "carr" would probably be right.
15. PCT - Directly to National Stage
1. One PCT question asked about what is required if you don't make a demand and want to proceed straight to the national stage and gave 5 very distinct fact patterns with how to accomplish it and what needs to be filed.
1. Possible Answer: you need to pay a surcharge..since you didn’t have the International search done.
2. APPEAL, REEXAM, AND REISSUE QUESTIONS
1. New Ground of Rejeciton Questions: If the app goes to the board, and they find a new ground of rejection, there are two options: request a rehearing on the Boards New Ground Rejections OR reopen prosecution to deal with the New Ground of Rejection.
1. The "Rehearing Requested" Quesiton
1. Question asks, after a Rehearing is requested on a Board Decision, what does the Examiner do?
1. Answer: Nothing. He does nothing till the board makes a decision on the rehearing.
2. "By proceeding in this manner, the appellant waives his or her right to further prosecution before the examiner." 1214.01
2. Rejected Claims Made allowable after on Reopened Prosecution.
1. Three paths with this one, all easy:
1. One variance question states that, on reopening the prosecution on the New Ground Rejection, the examiner can actually override the originally rejected claims (even if the Board affirmed the rejections).
2. Another variance, on reopening, the app goes abandoned for any reason, upon reviving, the applicant may not bring any claims that were Examiner Rejected and Board affirmed, back to the board.
3. Another variance, the reopening app is neither abandoned or allowed, but the Examiner just instead focuses on the New Grounds of Rejection Claims, after they deal with those claims, the whole case is then given back over to the baord so that the may continue with the original appeal issues (the claims originally in question).
2. RCE Restriction "quasi-recapture" appeal
1. Restriction is made, and claims are elected…then RCE is filed, and the RCE includes the non-elected claims, a restriction is again made, . . . Can he appeal? No…no claims stand rejected…(Restrictions are petitionable anyways).
3. Divisional Reissue Question
1. A patent issues with 10 claims allowed. Claims 1-5 were made by Inventor A, and 6-10 by inventor B….A assigned his side to Corp C, and B is pissed and won't assign and wants his own patent. What should Corp C do?
1. File TWO Reissues, Cancel 1-5 and remove A in the first reissue, and in the Second reissue, Cancel 6-10 and Remove B. See 1415.
4. The Hair-gel Question
1. An inventor gets a patent on a Hair Gel…the App was originally filed in 1999, and gets the patent in 2000…then one day a competitor sees the gel and is like WTF…I sold that exact same stuff in 1998 (one year before the patent in question was filed)..so what can he do?
1. Answer: Either an Inter Partes or Ex Partes Reexam…BUT it depends on when the Hair Gel patent was filed.
2. In some variances, the patent was filed after Nov 29, 2000 so the competitor should file an Inter Partes Reexam ( But note: InterPartes are only available if the patent was filed after 11/29/2000).
3. In other variances (such as the question stem above) the patent was filed before 11/29/2000, so the most the competitor can file is a ExParte (less control over the proceeding, but hey, better than nothing).
5. Investigating Deceptive Intent
1. The Office does NOT investigate allegations of fraud, inequitable conduct, or Duty of Disclosures in Reissue Apps.
2. Though there is one exception (and only because no investigation is necessary):
1. An admission or a judicial determination of fraud, inequitable conduct or non-disclosure.
2. If the applicant says nothing bad happened, it will be dispositive evidence that nothing bad happened (except if there is a judicial determination). (See 2012)
3. Also note, the Office needs to come aware of the Judicial decision INDEPENDENTLY of the application process..it's an external info thing. (See 1448).
3. ALL OTHER QUESTIONS
1. The Reasons for Allowance Question
1. Question on when the examiner is required to state his Reasons for Allowance…or stated differently, it asks when is it not necessery that the Examiner give reasons for Allownace.
1. Rule: The Examiner is never requiried to give any reasons for allowance. However, if it would help the clarity of the prosecution as a whole, the Examiner may include reasons of allowance.
1. In turn, after any Reasons of Allowance are given, the Applicant then may also file comments on the Examiners Reasons of allowance.
2. An example: if there are multiple reasons for allowance, the Examiner can make a Reasons of Allowance statement to say which reason was the most persuasive or controlling.
2. ADS to Correct Wrong Address
1. Three inventors are listed on the Application: A, B, and C. The address for B is wrong, so how can you fix it. . .
1. The assignee of the entire interest can send in an ADS with the correct address. (Remember, ADS's control all info when sent in later (except inventors names which is on the O/D)).
2. Variation: The variations asks which is NOT correct. The answer is C, "Send in Inventor B's address and have him sign it". It is not proper because the "Inventive Entity" must be ID'd (meaning, A, B, and C must be ID'd)….though only B must sign..basiclaly wrong..becuase it didn't ID all the inventive entity.
3. See 37 CFR 1.67 for more info...
3. The "which one can be a 102(e) ref for a rejection" question
1. Question states JJ Smithy files on some date..which can be a proper reference for a 102(e) rejection.
2. The Answer choices are:
1. Pending provisional app by another that claims same invention, filed before Smith'ys date. (This is wrong, this would cause an interference. Not a 102(e) rejection.
2. A prior patent by JJ Smithy (Wrong, because 102(e)'s are "by another).
3. A PCT app published in English. (Right).
4. A published article, filed before Smithy's date. (Wrong, only Patents and Patent pubs can be used as a 102(e) ref).
3. Variance: See Oct 2003 #17 PM…the two answers that are any goods are (a) a WIPO app with an IA of October 1st 2000 and (c ) a US Pat App Pub filed by Jones that was filed before smithy's…..
1. Here the answre is C…Jones is a valid 102(e) reference for a rejection..but more interestingly…WHY is A wrong?...Although it has a date before Smithys date…remember this rule
1. RULE: For WIPO app pubs to be used as a 102(e) reference they need three things:
1. The IA needs to be on or after 11/29/2000.
2. Designate the US.
3. Be in English.
4. Contesting Inventors
1. J and K work for a company…the company fires K..then the company asks a practitioner to file a patent naming J and K as inventors. K refuses to sign, and believes that he conceived the idea on his own…K hires an Attorney…what is the correct thing to do.
1. The answer choices
1. Fire E as the attorney of record, and put K's attorney in.
2. Provoke an interference by filing a new app, claiming the same invention, and naming K as the sole inventor.
3. File some petition thingy.
4. Wait till patent issues, then file a reexam.
5. Wait till patent issues, then file a reissue.
2. Answer is B. Can't do A, not really allowed…the petition thing is adequate..and you shouldn't just wait till the patent issues, that's a waste of resources.
5. Claiming priority to a Japanese National App to over come the Prior Art
1. A Jap App is filed, then a PCT app correctly claiming priority, Then a US National Stage App, but there is PA against the US App…Question is, can you overcome the PA by a claim of priority?
1. Turns on 1828 which says that, yes you may make a claim of priority, but within 16 months of the priority date (the Jap App date).
2. Note, one Variant out there says "No, because the Applicant waited longer than 16 months" then the next answer says "no, because the Practitioner waited too long"…I would say Prac, because the Prac reps the Applicant..however, the 1828 paragraph only mentions Applicant…but I don't think its dispositive…It says Applicant everywhere..and it means Prac…More likely turns on the 16 month from the priority date.
6. Limiting Claims
1. When is it appropriate for the Examiner to limit the number or nature of the claims?
1. Where the app is too informal for an action on the merits?
2. Where there is a undue multiplicity of claims, and there has been no succesful telephone call requesting an election.
3. Where there is a misjoinder of inventions, and there has been no successful tele request for election.
4. Where the disclosure is directed to perpetual motion.
5. All of the Above.
1. ANSWER: E….all of these would need to be limited in scope for the first initial inquiry…(see 707.07(g) Piecemeal Examination should not be done.)
7. Adding a claim that was previously cancelled by Pre-Exam Amendment
1. If you cancel a claim (in the question it was claim 4 of 6), then later you want to add it back in during the reexamination…what you should do is: : : Add claim 7, with the exact same wording as the cancelled Claim 4.
8. Red Ink vs Black Ink
1. Question asks which is wrong…one answer is that Red Ink is allowed on Applications. This is inaccurate.
1. Red Ink can be used by Examiners…so if the Examiner is doing something like an Examiners Amendment in Red Ink, it's probably okay.
2. If it’s the Applicant doing anything, it must be in black ink if at all.
1. Applicant's used to be allowed to use Red Ink in Amendments for Drawing Proposals, but Proposal Drawing process has since been abanedoned…so no more red ink for Applicant's.
9. The "Metal Titanium Baseball" Question
1. Two variations of a similar question stem..here is the stem
1. Friend Makes Metal Cored baseball, and writes an article about it. THEN:
1. June 20, article is given to friend who is member of a private BB museum. Not distributed yet.
2. June 25, BB is put on display at the private museum. Wealthy patrons can see it. None of whom are skilled in the art.
3. Some date, the article is catalogued.
4. July 1, TV ad annoucning Museum will go public.
5. July 4, Article is catalouged at library, and museum goes public.
1. ANSWER:
1. If the question asks for Prior Art date, then it’s the July 4th date.
2. If the question asks for public use date, then it’s the June 25th date (that the patrons are not skilled in the art is irrelevant).
10. The "mirror" Question
1. Question pertaining to a mirror invention and whether or not the reflective qualities of the mirror are inherent enough to not be mentioned in the specification. The question asks which would fail for a lack of enablement under 112.
1. Answer: If the spec talks about parallel and perpendicular positioning, it will result in an inconsistent spec, and the PHOSITA would not know which is which..thus would fail 112 1P.
2. Variation: The variation asks which "would comport" with PTO practice…the Parrallel vs Perpendicular answer choice is there..but its irrelevant….Answer choice A is correct: Because the definition of mirror automatically includes it's reflective qualities, there is no need to mention them in the spec.
11. Deleting Benefit Claim
1. Two Questions on Deleting a Claim that benefits priority-wise, from another patent.
1. Basically, the first asks how you may do it. The answer is to file an RCE.
2. The second question asks can he put the claim for benefit back in the app. And to get to the answer you need to know the 4/16 Month rule.
1. 4/16 Month Rule: to claim a benefit, priority-wise, from a foreign patent, you need to either (1) claim the benefit within 4 months of filing the US app, OR (2) file within 16 months of the original foreign (the one youre trying to claim benefit to).
2. Also see 200.11G, if you cancel a claim for benefit, you're waiving your right to the priority date…and you may not get it back later.
3. So, back to the "can he claim benefit again"….no he can't…he is over both 4/16 month options, and you can't just say the removing it was unintentional since he himself removed it. (see 200.11 G)
2. Variation: In the variation the patent issues, the issue fee is not yet paid, and the question is what can be done to have the deletion of the claim to benefit included.
1. Answer is between two choices. Just amend before paying the issue fee, or file an RCE, and the amendment. The answer is file the RCE, because without the RCE, the amendment is at the Examiner's discretion.
12. Suspended Practitioner
1. A "which is incorrect" question
1. Just know that the PTO, upon suspending your prac, will not add a new one for you.
1. So the which is incorrect one, probably said something like "they will add a new prac for you if they suspend your old one.
2. Also know 105: that the PTO examiners will not hold ANY communication, either written or oral with suspended pracs. (this was based off of some Prac who was suspended, then the Prac signed himself as an inventor, just to prosecute the app….not okay…But "he won in court" later (patent was valid)).
13. Digital Media for Gene Sequence
1. Question asks what mediums can you submit gene sequence on?
1. Your choices are:
1. Diskette
2. Magnetic Tape
3. 8mm Cartridge
4. CD
5. Magneto Optical Disk
2. If your forget just remember to search "Magnetic tape", and that list will pop up.
14. Who can sign a 1.132 not "by another " affidavit question.
1. The answer choices vary, but it comes down to two plausible choices…either the inventor (the signor of the O/D) or the Practitioner who is representing.
1. The likely most correct answer is the applicant….though there is info out there that say both answers are correct. But normally, if the inventor is making a declaration or affidavit, he really does need to be the one signing it.
15. Submitting Tables on CD
1. Normal rule is that if "A single table" is 51 pages or more, then that table can be submitted on CD.
2. But there is a quesiton that asks you have tons of tables, that add up to 52 pages what to do?
1. Answer: The over 50 pages rule is for a SINGLE table. If you have Mult tables, they have to go ver 100 pages before they need to be put on CD. (See 37 CFR 1.52.)
16. Trade Secret Question
1. Basically know that when Trade Secret law and patent law conflict, patent law will win because it benefits the public more.
2. Example, if someone files a patent and it turns out its someone elses trade secret, but that other guy won't disclose what the trade secret is, then patent law will trump and require the release of the trade secret to the public.
1. But there is one exception, if a "petition to expunge" is made by the trade secret guy, then the trade secret may stay a secret.
17. Best Mode Question
1. The requirement that the best mode needs to be disclosed CAN be satified by listing a list of embodiments, but not specifying which one is the best one….it's just that the best mode needs to be disclosed.
2. Example: if D is the best mode, and the applicant discloses A, B, C, D, E…he is NOT required to say "D is the best way to do it"…he just needs to list D out there to satisfy 112 1st paragraph best mode requirement.
18. The Toy Plane Question
1. The invention is a toy place with wings covered in Aluminum foil, for whatever reason. The claim has the language "comprising wings covered in aluminum foil". A prior reference is found that has a toy played completely layered in chewing gum wrapper, which is, in part, aluminum foil. The applicant says no way does that teach my invention since only covering the wings with foil increases the aerodynamics….so what should the examiner do?
1. Answer: maintain the rejection…A plane covered in aluminum foil has its wings covered in aluminum foil. The language of the claim is open ended ("Comprising"), with no negative limitations…so yes..this is valid prior art and the rejection should be maintained.
19. Info requested from the PTO
1. Company X, has an agent Joe Schmoe retained…they give him a Application number to a patent application of one of their competitors..they say call the PTO and get the info you can…see whether its been published or not.
1. Answer: He can't to the information…the PTO only gives that info to: Applicant's, Assignees, or Agents of Record. . . Unless the thing has been published. That he has the App number is meaningless, since the PTO will go out of their way to verify that you are on of the three listed above…
2. Variant: One of the answer choices out there says: the Applicant can get the info and then give it to the Agent..that would be okay…IF the applicant would do it.
20. Who to Contact Question
1. Question asks who to contact when you're filing a 1.183, Suspension of the Rules, Petition.
1. Basically, when the "interest of justice requires" you can ask the PTO to suspend the rules in some regard…so you use a 1.183 petition…but who do you send it to?
1. Answer: the Office has a list of people they designate in the PTO as "Officials" to handle suspension of rules petitions for different things…See 1002.02. The Primary examiner is even one of the officials…he can handle 1.183 Suspension of Rules when it pertains to Correction of Inventorship.
21. The Velcro Question
1. Easy question. Basically, use the rule: you CANNOT use trademark names in your claims to refer to stuff. The question arises because one of the claims recites the use of "Velcro" as a fastener…and the Examiner 112 Second Paragraph rejected it as indefinite, and th answer is that the rejection should be maintained and made final.
1. In the MPEP 2173.05(u), it states that a trademark or trade name only ID's the "source of the goods" and not the physical structure.
22. The Lipgloss Question
1. The rule to know is: It won't be a 102(b) bar on an invention if more than a year from before filing, all the use was experimental…..BUT the moment you do ANYTHING not experimental with it, its public use and can cause a 102(b) bar from that date.
1. Question says a girl invents lipstick and experiments with it on Date 1, then on Date 2, she decides the lipstick no longer needs testing, puts it on, and wears it out to a date, or to a party or something….so when to measure the 102(b) bar from?
1. Answer: Date 2…even if it was silly or trivial, the moment she stops using it experimentally, and out in the public, that date can serve as a 102(b) bar.
23. The Spanish Phone Question
1. A guy in Spain invents a phone and files a US patent in time. The patent issues….then later, he realizes that he wants to design patent the shape of the phone. What can he do? Answer choices say things like do a CIP, or claim priority to a Spanish Patent…but
1. Answer: Give up…in the question stem you learn that more than six months have passed since the US App was filed. There will be a 102(d) rejection (remember 102(d) is for foreign patent time bars), since the statutory time for a 102(d) DESIGN rejection is six months…not 1 year, like it is for utility patents…so lesson here is to file that design patent in less than 6 months!
2. Variant: The guy filed a utility in Spain, then a Design on the phone in the US (under 6 months. Then a CIP was filed on the design (adding a dialing pad)…Question asks what is prior art…Answer: the Spanish Utility patent IS prior art, because CIPs always break the priority chain..and the CIP and the Spanish patent are more than six months apart.Just remember: 102(d) is the enemy of the CIP….if you hit over 6 months (design) or 12 months (utility) you're gone.
1. Similar concept: you Can file a design and utility patent at the same time…no problem with that…BUT if your utility patent has similar claims so that the design is created just from following the utility patent claims, then the design patent will be rejected for double patenting.
24. Restriction Requirement in a Continuation
1. Question talks about a situation where a applicant filed for a patent, a restriction occurred, an election happened, then after that a Continuation was filed…..but the Applicant ignored the earlier restriction and included all the claims in the Continuation (including those that had been restricted). So what happens?
1. Nothing. It is okay to include all those claims again. In a continuation application the examiner must reinstate the restriction again for it to be effective.
25. Small Entity Status
1. Who can sign the Small Entity statement: it’s the three::: either the inventor, the assignee, or the attorney can sign an assertion of small entity status.
2. Similar question deals with what happens when small entity status is claimed, then it changes (because of assignment to a big corp).
1. Answer: After you get small entity status, you can just continue paying everythign at that discount, UNTIL the Issue Fee or the Maintenance fee becomes due. Then a readjustment of the status must be made.
1. So in the Question, Small Entity status is claimed..then its changed before the patent issues…the answer is that applicant or assignee can keep paying small entity status..then when issue fee becmoes due..start paying regular fees. (See 509.03)
26. What can an assignee not of record sign?
1. Question asks what can an assignee, who has not recorded the assignment with the PTO, sign? He can sign:
1. CPA's
2. Small entity statements.
3. A statement of common ownership of two inventions.
4. A NASA property rights statement
5. A request for a reexam
6. Others listed 324.
2. The small entity status is most likely to be tested. Basically, the assignee not of record can sign all this stuff, because all those things do NOT require an assertion or verification of ownership.
27. Need to file foreign language translation question
1. Question asks if you have to include a full translation of a reference that is in another language.
1. Answer: No you do not. But you need to include an explanation of what the non-English prior art is, and why it's relevant. (See CFR 1.98).
1. Though, if it's directly asked for (as in an interference or if the examiner asks you for it), you should supply it.
28. Death of Inventor before Application is filed
1. Guy invents a fishing invention, then dies before he can file.
2. The rule her e is that the legal reps can file for the inventor in the case that he dies. (CFR 1.42).
1. Two of the plausible choices include: the inventors heir who is 13 years old and is legally incapacitated, or "Barbara" the attorney of the estate of the will (in living will). Barbara is the correct answer.
3. Variant: In the variant, the inventor appoints his best friend as the administrator of his will/estate. The inventor dies. But there is a son that believes he was written as an heir in the will, and wants to prosecute the invention. So who gets to, the Son or the Administrator.
1. Rule, from 409.1, points out that in the case that there is a heir, and an appointed Administer of the estate, the administer of the Estate trumps…then if there is no will, the heirs can do it.
2. So the Administrator should prosecute it since he was expressly chosen by the deceased.
4. Variant: Inventor files the app, then assigns then app, then dies before allowance of the app. Who can prosecute, the assignee or the Executor of the Estate?
1. Answer: the Administer of the estate can prosecute the app, but must yield to the wishes of the assignee IF the assignee intervenes. (See 409.01(e)).
5. Variant: Inventor files, then assigns part interest to the patent agent, then the inventor dies.
1. Answer: the Patent Agent can continue prosecuting the app.
6. Variant: Two inventors, Alan and Bret, create an invention, file the application, then both die. Two possible answers: (1)if the Executor intervenes, the application will be allowed to issue, and (2) if the Executor does not intervene, the app will go to issue.
1. Answer: the first one, the Executor needs to intervene. (see CFR 1.42, "upon proper intervention".)
29. Canadian Patent Agent in the US
1. Question asks can a Canadian patent agent prosecute a patent here?
1. Yes. Provided that: (1) he is in good standing with the PTO in his home country (duh), (2) that all the applicant's authorize him to rep them (duh), and (3) that his home country give our agents similar privledges if we wish to prosecute over there (not so duh).
30. IDS's in relation to PTA's
1. Question states agent gets a citation from a foreign patent office and wishes to include it in the prosecution, but the Notice of Allowance has already been sent out, and the issue fee has not been paid. There are two variants of this question.
1. Once asks whether or not the IDS will be considered. From MPEP 609, we know that so long as the IDS with a copy of the citation is sent to the PTO before 3 months, then it will be considered.
2. Next question variant asks, whether or not the IDS filing will cause a PTA adjustment, and what can be done…..
1. Answer: to avoid a PTA adjustment of accumulated time, send that IDS in within 30 days of the foreign office sending it out (the date the foreign office stamped it with). If you do that, you won't trigger a PTA adjustment. (See April 2002 AM #2).
31. How to Claim Benefit
1. Question asks how does one properly claim benefit of priority from an earlier application. Answer choices are (a) in the O/D; (b) in the ADS; and (c ) in the first sentence of the spec.
1. The answer is to claim benefit in "the first sentence of the ADS". (See 201.11). (Don't fall for C…your supposed to claim benefit in the first sentence of the spec only for Foreign apps….PCT style).
32. Multiplicity (Proxil) rejection
1. Applicant has one claim on utility, and 900 covering small differences. What should examiner do.
1. Call up the applicant and ask him to select fewer for examination. (See 2173.05(n)).
33. Rejection after allowance
1. The Notice of Allowance is sent out. If the Examiner finds a new reason to reject it, may he do so after the allowance was sent out?
1. Answer: Yes, but he better be sure, and it'll be messy. He needs to get the Tech Director involved. (See MPEP 1308.01).
34. Brining up New Evidence, or a New Argument that was not listed in Appeal Brief.
1. Question asks, can the Applicant mention something new that was not mentioned in the Appeal Brief?
1. Yes, but only for good cause. The answer comes from CFR 41.47, and says that the Examiner and the Appellant may both bring up new evidence or arugments, but only after a showing of good cause.
35. 103 (c ) Exception Question
1. Question turns on whether a 103 (c) Rejection is allowable….it turns on whether or not the app was filed on or after 11/29/2010, since only apps filed after 11/29/2000 can get the 103(c) rejection benefit.
36. Maintenance Fee Paid with check that Didn't correctly ID the patent
1. The Check goes out, but it improperly ID's the patent…what to do.
1. Two options, depending on what the question asks.
1. By 2580, any improperly ID'd correspondence will be sent back to the applicant. IF he resubmits it to the PTO, in proper form, in LESS than two weeks, the PTO will afford him the first initial mail date.
2. But other questions focus if the applicant is overall unhappy with the PTO's rejection of the payment. The Applicant has two months to petition the rejection of the maintenance fee.
37. Indefinite Claim using the word "high"
1. Is using the word "high" to denote a range per se indefinite?
1. Probably not. The word "high", and really any other term, is not indefinite if a PHOSITA would know the meaning. (2173.05(b)).
38. The "two layers" Question
1. The Invention has two layers in "direct and continuous" contact, the PA has two layers that have epoxy holding them together.
1. One variant asks what answer choice would be anticipated by the prior art. There are two answer choices that avoid the Prior Art (one has a affirmative limitation, the other has a negative limitation)…But A is anticpated by the PA since it only recites the two layers next to each other…which includes next to each other with epoxy there…
2. The second variant asks which AVOID the PA…..same everything else….here, this time choose the once that successfully beat the prior art. B has an affirmative limitation, and C has a negative limitation, and D says "Both B and C are Correct"….so choose D.
3. See April 2000 AM #17 for an example.
39. Means plus Function, determining Equivalence.
1. The question asks how can one determine if the PA is equivelant, so that it can be rejected as prior art.
1. MPEP 2183, the PA is an equivelant and there should be a rejection if:
1. The PA performs the function specified in the claim.
2. There is no negative limitation, or exclusion of the PA in the spec
3. If there is an equivelance of a means-function claim (remember, means-function claims are held to a more stringent standard, and they are easier to rejected as anticipated).
40. Two Month Extension Fee Question
1. Question asked what date to calculate extension fee from, after a final office action, the Applicant responds in less than 2 months, then the Examiner files an advisory action over three months.
1. Rule: If you respond under 2 months, and he responds over three months, then you use the Advisory action date (the later of the two), to calculate extensions from.
41. Chemical Claim
1. Chemical invention is claimed, but the spec does not disclose how to make the chemical. The examiner rejects it under 112 1st Paragraph, for Enablement, and a rejeciton under First paragraph for Written description. The Applicant points out that a PHOSITA would know how to make the chemical listed in one of the claims…what should the examiner do?
1. Answer: Withdraw the rejection for enablement, but maintain the rejection for lack of written description.
2. Rationale: see MPEP 2161. Basically, there was a huge quesiton whether written description and enablement were separate requirements. The Fed Circuit has ruled again and again they are separate. So on could know how to make something (enabled) but not know what it is (like if App disclosed how to make A and B, but didn’t specifiy which was claimed…the App would be enabled but fail for written description)…..vice versa too, something can be described but not enabled (more common)….here, the chemical was likely enabled since a PHOSITA could make, however, it was not described…and 112 1P requires a full Written Description.