Patbar Notes Set I Aug 2014

Question 1

Ch. 400- Representative of Inventor or owner

Answer 1

It has been reported that an exam question involves a Canadian agent who is registered in the USPTO now resides in the U.S. If this becomes known to the OED/USPTO, the agent’s status as a U.S. agent will be promptly removed.

Question 2

Ownership Does not need to be established

Answer 2

Examples of situations where ownership need not be established under 37 CFR 3.73(b) are when the assignee: signs a request for a continued prosecution application under 37 CFR 1.53(d), where papers establishing ownership under 37 CFR 3.73(b) were filed in the prior application and ownership has not changed; signs a small entity statement; signs a statement of common ownership of two inventions; signs an affidavit under 37 CFR 1.131 where the inventor is unavailable; signs a certificate under 37 CFR 1.8; or files a request for reexamination of a patent under 37 CFR 1.510.
It has been reported that the above paragraph has been tested on the exam. The correct answer was “signs a small entity statement.”

Question 3

A person acting in representative capacity MAY NOT

Answer 3

A person acting in a representative capacity may not sign:

(1) A power of attorney.
(2) A document granting access to an application (except where an executed oath or declaration has not been filed, and the patent practitioner was named in the papers accompanying the application papers).
(3) A change of correspondence address (except where an executed oath or declaration has not been filed, and the patent practitioner filed the application).
(4) A terminal disclaimer.
(5) A request for an express abandonment without filing a continuing application.

Question 4

Filing a statement under 3.73(b)

Answer 4

Assignee becomes of action.

Revocation of the power of attorney becomes effective on the date that the revocation is RECEIVED in the Office (not on the date of ACCEPTANCE).

Question 5

U.S. Applicant exception

Answer 5

The applicants in a U.S. patent application must be the inventors except where 37 CFR 1.42, 1.43, or 1.47 apply. The exceptions apply where an inventor is deceased, legally incapacitated, or refuses to sign or cannot be found after diligent effort.

Question 6

A patent app filed without a corresponding address

Answer 6

2 months from the filing date in which to do so before abandonment occurs.

Question 7

Death of Inventor

Answer 7

Another variation: Inventor dies after application filed and after the assignment of all rights and before allowance of the application. When an applicant who has prosecuted an application after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes.

Question 8

Death of Inventor

Answer 8

Another fact pattern: Inventor dead, appointed best fried as executor/administrator of will. Son thinks that he will be one of the heirs of the estate. Son wants to go ahead and file for patent application on Dad’s invention. If the estate is over the sum required by state law for the appointment of administrator, the administrator (executor or legal representative) may file the application. If there was no will, or no executor was appointed in the will and the estate was under the sum required by the state for appointing an executor, then the heirs can file the application.

Question 9

Death of Inventor

Answer 9

One fact pattern reported: Death of inventor before the application was filed, the inventor was in possession of the invention prior to death, the invention was a fishing device, the heir is 13 years old and legally incapacitated, and Barbara has the power of attorney in the inventor’s living will. In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent (37 CFR 1.42), or one who has reason to believe that he or she will be appointed legal representative of a deceased inventor may apply for a patent as legal representative in accordance with 37 CFR 1.42.

Question 10

Death of Inventor

Answer 10

It is apparent that there are a number of questions involving the death of an inventor on the exam. It is reported that there is a question where the inventor assigns part of the invention to a practitioner and promptly dies. Unless a power of attorney is coupled with an interest (i.e., the patent practitioner is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated. See MPEP 409.01.

Question 11

Death/Incapacity

Answer 11

It has been reported that the following points may have been tested on the exam:

If the inventor is dead, insane, or otherwise legally incapacitated, an application may be made by someone other than the inventor as provided for in 37 CFR 1.42 and 1.43.

A minor (under age 18) inventor may execute an oath or declaration under 37 CFR 1.63 as long as the minor is competent to sign (i.e., understands the document that he or she is signing).

The death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated.

Question 12

Death/Incapacity

Answer 12

Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator.

When an applicant who has prosecuted an application after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes.

When an inventor dies after filing an application and executing the oath or declaration required by 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene. This practice is applicable to an application which has been placed in condition for allowance or passed to issue prior to notification of the death of the inventor.

Question 13

Unavailable inventor

Answer 13

When a joint inventor of a pro se application dies after filing the application, the living joint inventor(s) must submit proof that the other joint inventor is dead. Upon submission of such proof, only the signatures of the living joint inventors are required on the papers filed with the USPTO if the legal representative of the deceased inventor does not intervene. If the legal representative of the deceased inventor wishes to intervene, the legal representative must submit an oath or declaration in compliance with 37 CFR 1.63 and 1.64.

A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in 37 CFR 3.73(b).

Question 14

Separate verification

Answer 14

As statements submitted to the USPTO by any person are now, by operation of 37 CFR 11.18(b)(1), verified statements, a separate verification requirement is no longer necessary. The USPTO, however, has retained the verification requirement for a statement to be submitted under oath or declaration in a number of sections (e.g., 37 CFR 1.63, 1.130, 1.131, 1.132, 1.495(f), and 5.25).

Question 15

Things that can be FAX 502.01

Answer 15

It has been reported that a question requires that you know what correspondence can be transmitted by fax. The following items may be filed 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.

NOTE: CPA cannot benefit from certificate of transmission, even though it can be faxed.

Question 16

EMAIL v. EFS-Web

Answer 16

A reply to an Office action may NOT be communicated by applicant to the USPTO via Internet e-mail. If such a reply is submitted by applicant via Internet e-mail, a copy will be placed in the appropriate patent application file with an indication that the reply is NOT ENTERED.

EFS-Web USPTO’s electronic filing of patent correspondence. Ch. 502.05

Question 17

Small Entity Fees 509.02

Answer 17

The fees which are reduced include patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees (37 CFR 1.16), extension of time, revival, and appeal fees (37 CFR 1.17), patent issue fees (37 CFR 1.18), statutory disclaimer fee (37 CFR 1.20(d)), and maintenance fees on patents (37 CFR 1.20). Other fees, established under section 41 (c) or (d)(2) of Title 35, United States Code, are not reduced for small entities since such a reduction is not permitted or authorized.
Fees which are not reduced include petition and processing fees (other than revival), 37 CFR 1.17(f)-(k), document supply fees, 37 CFR 1.19, certificate of correction fees, 37 CFR 1.20(a), request for reexamination fees, 37 CFR 1.20(c), miscellaneous fees and charges, 37 CFR 1.21, and international application fees, 37 CFR 1.445.

Question 18

Small Entity Fees

Answer 18

Which of the following fees are reduced for small entities?

I.Patent application filing fees
II.Petition for an extension of time fees

IV.Patent Issue fees

It has been reported that a question involves an applicant that accidentally paid a large entity filing fee even though entitled to small entity status. Can he get a refund and how long does he have to apply? Refunds are available if a request for a refund is filed within 3 months.

Question 19

Small Entity Status

Answer 19

It has also been reported that a question asks what an assignee whose ownership has not been established under 37 CFR 3.73(b)) can sign. A correct answer is an assertion of small entity status.

Transfer of rights to a Japanese patent, for example, would not affect small entity status if no rights in the United States to a corresponding patent were likewise transferred.

Question 20

Certificate of Transmission does not apply: 512

Answer 20

(2) This provision does not apply to:
Filing of national patent applications (including a CPA).
Filing papers in cases before the Board of Patent Appeals and Interferences.
Filing of an international application.
Filing correspondence in an international application.
Filing papers to enter the national stage in the U.S.
Correspondence filed in connection with disciplinary proceedings.

Also, express mail containing a certificate of mail, only the MAIL-IN date will be counted…not the certificate of mail.

Question 21

ADS and inconsistant info

Answer 21

37 CFR 1.76(d)(1) provides that the latest submitted information will govern whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by an oath or declaration, except as provided by 37 CFR 1.76(d)(3) (the oath or declaration governs in the naming of inventors and their citizenship)

Question 22

Correcting name of an inventor

Answer 22

It has been reported that an exam question involves the correction of a typographical error in the spelling of the inventor’s name. The applicant should submit an application data sheet correcting the error.

A petition is not necessary.

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.

Question 23

Additional fees

Answer 23

The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper.

It has been reported that an exam question deals with the basic filing fee. Among the answer options is that the basic filing fee includes up to three independent claims and 20 total claims.

Question 24

Refunds of fees

Answer 24

Effective March 10, 2006, the Office may refund the search fee and any excess claims fee paid in an application filed under 35 U.S.C. 111(a) on or after December 8, 2004, if applicant files a petition under 37 CFR 1.138(d) to expressly abandon the application before an examination has been made of the application.

The basic filing fee, examination fee, and application size fee cannot be refunded.

Fee refunds must be requested within 2 years. $25 or smaller amount will not be refunded unless specifically requested.

A nonprovisional application may require the payment of excess claims fees. An excess claim fee is required for each claim in excess of 20 and for each independent claim in excess of 3. Additionally, a separate fee is required for an application containing a proper multiple dependent claim. The actual calculation of excess claims involving multiple dependent claims will be reviewed in a later section.

Question 25

Ch. 608 Disclosure

Answer 25

If a provisional application is not in English, an English translation will not be required. However, translation is required if a nonprovisional later claims benefit.

Nonprovisional application not in English must provide a translation.

The specification and claims may contain chemical and mathematical formulae (but not drawings or flow diagrams).

Question 26

Description

Answer 26

The description portion of the specification may contain tables, but the same tables must not be included in both the drawings as a figure and in the description portion of the specification.

Question 27

Abstract 37 CFR 1.72

Answer 27

The abstract must start on a separate sheet under the heading “Abstract” or “Abstract of the Disclosure.” The abstract may not exceed 150 words. The purpose of the abstract is to allow the reader to quickly determine the nature and gist of the disclosure.