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Flashcards in GREY NOTES MOD 1-10 Deck (12):

Secrecy, Confidentiality MPEP 100

It has been reported that a prior exam question involves Company A that gave their agent B a competitor's unpublished patent application number, and asked if the agent B could get the information on the competitor's patent application, including whether it had been published and the publication date by telephoning the USPTO. Since such information may only be given to the applicant, or the assignee of record, or the attorney or agent of record, such information would not be available to agent B.


Power to inspect by attorney acting in REPRESENTATIVE capacity

A person acting in a representative capacity (i.e., where a written power of attorney has not been filed) named in the application papers may execute a power to inspect but only if an oath or declaration has not been filed.


Suspended practitioner

It has been reported that a question involves a suspended practitioner (it is the type of question which asks, "which one is incorrect"). Know that the USPTO will not appoint a new practitioner if the one named in the power of attorney is suspended.


Access control by either the applicant or assignee of the full interest.

It has been reported that an exam question involves whether an applicant may be excluded from obtaining access to an application where there is an assignee.


The question states: An amendment in an unassigned nonprovisional application seeks to cancel claims so that fewer than all of the currently named inventors are the actual inventors of the invention being claimed. The amendment includes a request to delete the names of the persons who are not inventors. In accordance with proper USPTO rules and procedure, the request may be signed by which of the following?

(A) A registered practitioner not of record who acts in a representative capacity under 37 CFR 1.34.

(B) All of the applicants (37 CFR 1.41(b)) for patent.

(C) A registered practitioner of record appointed pursuant to 37 CFR 1.32(b).

(D) (B) and (C).

(E) (A), (B), and (C).

Answer (E) is the correct answer. Sections 1.48(b) and (d) indicate that a request to correct the inventorship must be signed by a party as set forth in 37 CFR 1.33(b). (A), (B), and (C) are provided for in 37 C.F.R. 1.33(b). Thus (E), the most inclusive answer, is correct.


CIP applications

An exam question recites that the applicant files a first patent application disclosing and claiming an invention A. The applicant makes improvements on the invention (invention B) and files a CIP disclosing and claiming inventions A and B and a method of making B. The second application properly claims the benefit of the first application. The examiner found prior art published at a time between the dates when the first and second applications were filed which discloses both inventions. The correct answer is that the examiner can only reject the claims to invention B since the claims to invention A benefit from a date earlier than the reference (i.e., the filing date of the first application).


Executed oath or declaration for continuation

It has been reported that an exam question involves five inventors where two of the inventors that have assigned the invention to company X and three of the inventors have assigned the invention to company Y. A patent application is filed naming all five inventors. Later, the three inventors from Y file a continuing application claiming the filing date of the first application. Company Y cannot locate the two inventors from company X because they no longer work for X. Is filing proper without the X inventors? The answer is "yes" because a newly executed oath or declaration is not required in a continuation application. See 37 CFR 1.63(d)


Improper RCE

If the request lacks a submission, fee or the prosecution of the application is not closed, the USPTO will treat the improper CPA as an improper RCE, and the time period set in the last Office action (or notice) will continue to run.



For examination priority purposes only, the USPTO will treat continuation CPAs as if they were "amended" applications (as of the CPA filing date) and not as "new" applications.

. A CPA may be based on a prior CPA so long as the prior CPA is complete under 37 CFR 1.51(b) (specification, oath or declaration, drawings where necessary, and filing fees) and is a design application. Under 37 CFR 1.53(d), the specification, claims, and drawings, and any amendments entered in the prior nonprovisional application are used in the CPA. A new basic filing fee, search fee, and examination fee are required.



It has been reported that an exam question involves a patent application that properly claims the benefit of a prior application EXCEPT when the prior application is a design, national stage, CPA, provisional, etc. The correct answer is a CPA.


Deleting a benefit claim MPEP 201.11

It was reported that a number of questions involve deleting a benefit claim. In one question you had to realize that it was proper to file an RCE for this purpose. In another question, you had to realize the 4 months/16 months deadlines were exceeded, and that because the applicant removed the claim himself he cannot avail himself of adding the claim back as unintentionally delayed under 37 CFR 1.78(a)(3).


Assignment Documents MPEP 300

It has been reported that the following point may have been tested:

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.